Guess? IP Holder L.P. & Guess?, Inc. v. Guess? IP Holder L.P. c/o Domain Administrator
Claim Number: FA0604000678076
Complainant is Guess? IP Holder L.P. & Guess, Inc. (collectively, “Complainant”), represented by Gary J. Nelson, of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Suite 500, PO Box 7068, Pasadena, CA 91109-7068. Respondent is Guess? IP Holder L.P. c/o Domain Administrator (“Respondent”), 1444 S. Alameda Street, Los Angeles, CA 90021.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <guessbymarciano.com>, registered with Nameview, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 13, 2006.
On April 13, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <guessbymarciano.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@guessbymarciano.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <guessbymarciano.com> domain name is confusingly similar to Complainant’s GUESS and MARCIANO marks.
2. Respondent does not have any rights or legitimate interests in the <guessbymarciano.com> domain name.
3. Respondent registered and used the <guessbymarciano.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a multinational retailer that designs and manufactures handbags, activewear, jewelry, swimwear, jeans and other apparel. In connection with these products and services, Guess? IP Holding L.P. is a wholly owned subsidiary of Guess?, Inc., and is the owner of numerous marks registered with the United States Patent and Trademark Office (“USPTO”), including the GUESS mark (Reg. No. 1,445,261 issued June 30, 1987) and the MARCIANO mark (Reg. No. 1,179,281 issued November 24, 1981).
Respondent registered the <guessbymarciano.com> domain name on June 23, 2005. Respondent’s domain name resolves to a website that features links to various competing and non-competing commercial websites.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has established rights in the GUESS and MARCIANO
marks through registration of the marks with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning”); see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
Complainant contends that Respondent’s <guessbymarciano.com> domain name is confusingly similar to Complainant’s marks. Respondent’s domain name features Complainant’s entire GUESS and MARCIANO marks and adds the generic term “by.” The Panel finds that neither the combination of Complainant’s marks nor the addition of the generic term “by” sufficiently distinguishes Respondent’s domain name from the Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interest in the <guessbymarciano.com> domain name. Once Complainant makes a prima facie case, the burden shifts to Respondent to show that it has rights or legitimate interests. Since Complainant has asserted that Respondent has no rights or legitimate interests in the domain name and Respondent has failed to come forward with concrete evidence rebutting the assertion, a prima facie case has been established. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel, however, chooses to analyze whether the evidence supports Respondent’s rights or legitimate interests.
Complainant contends that although Respondent appears to be commonly known by the <guessbymarciano.com> domain name, Respondent has failed to set forth evidence rebutting this assertion. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4 (c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant asserts that Respondent is using the <guessbymarciano.com> domain name to operate a website that features links to various competing and non-competing commercial websites from which Respondent presumably receives commercial gain. The Panel finds that Respondent’s use of the <guessbymarciano.com> domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is operating a website
at the <guessbymarciano.com> domain name that features links to
various competing and non-competing commercial websites from which Respondent
presumably receives commercial gain. The
Panel finds that Respondent’s use amounts to a disruption of Complainant’s
goods in violation of Policy ¶ 4(b)(iii).
See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business).
Moreover, the Panel finds that
Respondent’s use of the <guessbymarciano.com> domain name will likely cause confusion among Internet users as to
Complainant’s sponsorship of or affiliation with the resulting website. Such use is further evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site); see also Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to
confuse consumers is not required for a finding of trademark infringement,
intent to deceive is strong evidence of a likelihood of confusion.").
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <guessbymarciano.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 30, 2006
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