Guess? IP Holder L.P. and Guess?, Inc. v. 余佳鑫 / 余佳鑫
Claim Number: FA1809001804761
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is 余佳鑫 / 余佳鑫 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guess.xn--io0a7i> and <guess.xn--55qx5d>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 5, 2018; the Forum received payment on September 5, 2018.
On September 7, 2018, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@guess.xn--io0a7i, postmaster@guess.xn--55qx5d. Also on September 7, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Required Language of Complaint
Alternatively, the Panel may decide to continue the case with the English-language submission of the Complaint. See Rule 11.
Complainant has alleged that because Complainant is unable to communicate in Chinese and that there are various English phrases on the disputed domain name’s resolving webpage, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Having regard to all the circumstances, the Panel determines that the proceeding should be conducted in the English language.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Guess? IP Holder LP and Guess?, Inc. Complainant Guess? IP Holder LP is a Delaware limited partnership that is effectively wholly owned by Complainant, Guess?, Inc. See Deedwania Decl., Ex. E.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and it will therefore treat them all as a single entity in this proceeding. Nonetheless, in this decision the Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: Internationalized Domain Name
The domain names in dispute, <guess.xn--io0a7i> and <guess.xn--55qx5d>, are internationalized domain names (“IDN”) with the PUNYCODE translations of [<guess.网络>] and [<guess.公司>], respectively. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names properly in the [<guess.网络>] and [<guess.公司>], it first had to encode it into the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds that the [<guess.网络>] and [<guess.公司>] domain names are the same as its PUNYCODE translation, <guess.xn--io0a7i> and <guess.xn--55qx5d>, for purposes of this proceeding.
A. Complainant
Complainant made the following contentions:
Complainants, Guess? IP Holder L.P. and Guess?, Inc. (collectively, “Complainant”), own the world-famous GUESS brand, which it has used for over 30 years in connection with its highly successful lines of men’s and women’s apparel and related goods. Complainant has rights in the GUESS mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,433,022, registered March 17, 1987). See Compl. Ex. D. Respondent’s <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names are confusingly similar to Complainant’s GUESS mark as they incorporate the mark in their entirety and are differentiated only by the additions of the 网络 and 公司 generic top-level domains (“gTLD”).
Respondent has no rights or legitimate interests in the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use the GUESS mark in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, both disputed domain names resolve to inactive pages. See Compl. Ex. G.
Respondent registered and is using the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names in bad faith. Both of the disputed domain names resolve to inactive pages. See Compl. Ex. G. Further, Respondent clearly had actual and/or constructive knowledge of Complainant’s rights in the GUESS mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that produces a highly successful lines of men’s and women’s apparel and related goods
2. Complainant has established its trademark rights in the GUESS mark based on its registration of the mark with the USPTO (e.g. Reg. No. 1,433,022, registered March 17, 1987).
3. The <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names were both registered on August 1, 2018.
4. Both disputed domain names resolve to inactive pages.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GUESS mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the GUESS mark (e.g. Reg. No. 1,433,022, registered March 17, 1987). See Compl. Ex. D. Therefore, the Panel holds that Complainant’s registration of the GUESS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s GUESS mark. Complainant argues that Respondent’s <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names are confusingly similar to Complainant’s GUESS mark as they incorporate the mark in their entirety and are differentiated only by the additions of the 网络 and 公司 gTLDs which Complainant contends and the Panel accepts are descriptive gTLDs, meaning “the company” and “the internet” respectively. An addition to a complainant’s mark such as a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Therefore, the Panel determines the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names are confusingly similar to the GUESS mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GUESS trademark and to use it in its domain names, adding only generic TLDs;
(b) The <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names were both registered on August 1, 2018;
(c) Both disputed domain names resolve to inactive pages;
(d) Respondent has engaged in the foregoing conduct without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names. Specifically, Complainant contends Respondent is not authorized or licensed to use Complainant’s GUESS mark and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of records for the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names list the registrant as “余佳鑫 / 余佳鑫,” and no information on the record indicates that Respondent is authorized or licensed to use the GUESS mark. See Compl. Ex. A. The Panel therefore finds that Respondent has not been commonly known by the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain names resolve to inactive pages. An inactive holding of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Complainant provides screenshots of the disputed domain names’ resolving websites which both show error pages. See Compl. Ex. G. Therefore, the Panel finds that Respondent failed to use the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, The Panel notes that Complainant does not make any cognizable arguments that would fall under Policy ¶ 4(b). However, the Panel also notes that these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel finds that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient for a finding of bad faith.
Complainant submits that Respondent registered and uses the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names in bad faith because they resolve to inactive pages. An inactive holding of a disputed domain name can demonstrate bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel notes that Complainant provides screenshots of the disputed domain names’ resolving websites which both show error pages. See Compl. Ex. G. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent had actual knowledge and/or constructive notice of Complainant’s rights in the GUESS mark. Constructive knowledge is insufficient for a finding of bad faith, but actual knowledge of a complainant’s rights in a mark may indicate bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy.");see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Complainant contends that given its various trademark registrations around the world and Respondent’s use of the mark at the resolving webpages of the disputed domain names, Respondent had actual knowledge of the mark. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s rights in the GUESS mark and this demonstrates bad faith per Policy ¶ 4(a)(iii).
Thirdly, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration, retention and use the disputed domain names using the GUESS mark, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guess.xn--io0a7i> and <guess.xn--55qx5d> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 2, 2018
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