Guess? IP Holder L.P. and Guess?, Inc. v. BOTTY TATIANA
Claim Number: FA1410001585808
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is BOTTY TATIANA (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fr-guess-eboutique.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2014; the National Arbitration Forum received payment on October 20, 2014.
On October 21, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <fr-guess-eboutique.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 October 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2014 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@fr-guess-eboutique.com. Also on October 22, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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 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
1. Respondent’s <fr-guess-eboutique.com> domain name is confusingly similar to Complainant’s GUESS mark.
2. Respondent does not have any rights or legitimate interests in the <fr-guess-eboutique.com> domain name.
3. Respondent registered and uses the <fr-guess-eboutique.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the GUESS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). Complainant uses the mark to sell clothing and accessories.
Respondent registered the <fr-guess-eboutique.com> domain name on September 9, 2014, and uses it to sell counterfeit goods in competition with goods offered under Complainant’s GUESS mark.
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(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.”).
The Panel finds that Complainant’s USPTO registration of its GUESS mark satisfies the initial requirements of Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Respondent’s <fr-guess-eboutique.com> domain name features Complainant’s entire mark, and adds the term “eboutique,” the geographic indicator “fr” (abbreviation for France), hyphens, and the gTLD “.com.” Prior panels have found confusing similarity despite such alterations to an incorporated mark. The addition of hyphens and a gTLD have no distinguishing value in the Policy ¶ 4(a)(i) analysis. See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). Further, prior panels have held that the addition of generic, descriptive and geographic terms fail to distinguish a domain name from a complainant’s mark. For example, in Google Inc. v. Fundacion Private Whois / Domain Admin., FA 1473756 (Nat. Arb. Forum Jan. 9, 2013), the panel found the <android-rus-market.net> domain name confusingly similar to the ANDROID mark, stating that, “the additions of geographic terms and descriptive terms are not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i).” Thus, Panel finds that the <fr-guess-eboutique.com> domain name is confusingly similar to the GUESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent lacks rights in the <fr-guess-eboutique.com> domain name. Complainant claims Respondent is not commonly known by the disputed domain name, but rather is identified as “Botty Tatiana” in the WHOIS information. Complainant states that it shares no relationship with Respondent. Thus, the Panel finds that Respondent is not commonly known by the <fr-guess-eboutique.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent is not making a bona fide offering of goods or services at the disputed domain name, nor a legitimate noncommercial or fair use of the disputed domain name. The Panel notes that the <fr-guess-eboutique.com> domain name resolves to a website that features Complainant’s GUESS mark and logo, and counterfeit GUESS merchandise. The Panel finds that Respondent’s attempts to pass itself off as Complainant is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant demonstrates that the <fr-guess-eboutique.com> domain name resolves to a website where counterfeit goods are sold, in competition with Complainant’s own retail offerings, disrupting Complainant’s business. Prior panels have found evidence of Policy ¶ 4(b)(iii) bad faith where the respondent registered and used the disputed domain name for the purpose of selling counterfeit products. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). The Panel finds that Respondent’s efforts to sell counterfeit versions of Complainant’s products serves to disrupt Complainant’s own business, bad faith under Policy ¶ 4(b)(iii).
Further, Complainant claims Respondent has attempted to mislead Internet users as to Complainant’s affiliation with the disputed domain name in order to commercially gain from Complainant’s goodwill. The Panel agrees and finds bad faith pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Given Respondent’s reliance on Complainant’s mark and counterfeit goods at the resolving website, Complainant argues Respondent must have known of Complainant and its rights at the time it registered the disputed domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant, further evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fr-guess-eboutique.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 21, 2014
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