Guess? IP Holder L.P. and Guess?, Inc. v. priyanka thalawattage
Claim Number: FA1510001641648
Complainants are Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is priyanka thalawattage (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-it.net>, registered with Network Solutions, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainants submitted a Complaint to the Forum electronically on October 8, 2015; the Forum received payment on October 8, 2015.
On October 9, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <guess-it.net> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2015 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-it.net. Also on October 12, 2015, 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.
A timely Response was received and determined to be complete on October 26, 2015. Complainants timely submitted an Additional Submission on November 2, 2015.
On October 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. These entities are affiliated companies which, between them, own multiple trademarks bearing the GUESS mark. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006); Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003). The two complaining parties have provided sufficient evidence to establish the required nexus or link between them, such that they may be considered a single entity in this proceeding. Hereafter, Guess? IP Holder L.P. and Guess?, Inc. will collectively be referred to hereafter as “Complainant.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns the GUESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered March 17, 1987). Complainant uses the GUESS mark in connection with its line of men’s and women’s apparel and related goods, including women’s handbags, watches, and shoes.
2. The <guess-it.net> domain name is confusingly similar to the GUESS mark. The domain name includes the generic term “it,” adds a hyphen, and adds a generic top-level domain (“gTLD”) “.net” to the domain name.
3. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name.
4. Further, Complainant has never given permission for Respondent to use Complainant’s GUESS mark. Respondent’s lack of rights or legitimate interests in the <guess-it.net> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
5. Respondent’s <guess-it.net> domain name currently resolves to an undeveloped website containing the statement “Looks Like This Domain Isn’t Connected To A Website Yet.”
6. Respondent has engaged in bad faith registration and use of the <guess-it.net> domain name. Respondent uses the disputed domain to resolve to a blank or inactive page. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
B. Respondent
1. The <guess-it.net> domain name was registered April 22, 2015.
2. Respondent owns a company that uses the name Guess-it LTD, and Respondent registered its company with the Registrar of Companies for England and Wales (Reg. No. 9,619,734, registered June 2, 2015). Respondent registered the “Guess-It” trademark with the United Kingdom Intellectual Property Office (Reg. No. 3,095,376, registered May 22, 2015) and Complainant did not file any complaints to the IPO during the registration process.
3. “Domain names are available anytime anywhere as long as they are not being currently used. Our domain name is www.guess-it.net which is our brand name. When we choose this domain name it wasn't being used by anyone. So we are the only registered owner. This is an insult to our brand name and our reputation.”
C. Complainant’s Additional Submission
1. “Respondent’s UK trademark registration is a composite mark of a fanciful design inside of a red and black circle with the Guess-it wordmark below. The registration is for the composite mark as a whole, not just for the Guess-it wordmark. While Complainants believe that the mark as a whole is concerning and may be subject to a future cancelation proceeding, the
artful circle and fanciful design help distinguish the composite mark from the “Guess-it” wordmark alone.
2. In contrast, Respondent’s URL is and necessarily must be limited to the wordmark alone. The subject domain name features Complainants’ entire GUESS Mark as the dominant portion of the domain name, and merely adds the descriptive and/or generic term "-it." The addition of
this term does nothing to distinguish the subject domain name from Complainants’ mark pursuant to ¶ 4(a)(i) of the Policy. Rights in the composite mark–which Guess disputes–certainly do not confer rights in the elements of the mark, such as the confusingly similar Guess-it wordmark. Whatever rights respondent may have in its composite mark, certainly do not provide justification for its registration of such a confusingly similar URL.”
FINDINGS
Complainant holds trademark rights for the GUESS mark. Respondent’s domain name is confusingly similar to Complainant’s GUESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <guess-it.net> domain name, and that Respondent registered and uses the domain name in bad faith.
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.
Complainant owns the GUESS mark through its registration with the USPTO (e.g., Reg. No. 1,433,022, registered March 17, 1987). Complainant uses the GUESS mark in connection with its line of men’s and women’s apparel and related goods, including women’s handbags, watches, and shoes. Registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Accordingly, Complainant’s USPTO registration is sufficient to establish Complaint’s rights in the GUESS mark under Policy ¶ 4(a)(i).
Complainant argues that the <guess-it.net> domain name is confusingly similar to the GUESS mark. The domain name includes the generic term “it,” adds a hyphen, and adds the gTLD “.net” to the domain name. Confusing similarity has been found to exist when a respondent adds a generic term to a mark in which a complainant has rights. See 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). Further, the addition of a hyphen and a gTLD are insufficient to distinguish such a domain name from the registered mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent has no rights or legitimate interests in the <guess-it.net> domain name. Specifically, Complainant insists that Respondent is not commonly known by the domain name, as the WHOIS record for the <guess-it.net> domain name does not reflect that Respondent is commonly known by the domain name. The WHOIS information for the <guess-it.net> domain name lists “priyanka thalawattage” as the registrant of record. Further, Complainant has never given permission for Respondent to use Complainant’s GUESS mark. The Panel agrees that these contentions, supported by the record, are sufficient to establish that Respondent is not commonly known by the domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <guess-it.net> domain name is made evident by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. According to Complainant, Respondent’s <guess-it.net> domain name currently resolves to an undeveloped website containing the statement “Looks Like This Domain Isn’t Connected To A Website Yet.” Respondent’s failure to use the domain name is not a bona fide offering of goods or services under Policy ¶4 (c)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). This Panel agrees that as Respondent has failed to demonstrate its use of the <guess-it.net> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, Respondent has not established rights or legitimate interests in respect of the domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has engaged in bad faith registration and use of the <guess-it.net> domain name. Complainant has shown that Respondent uses the domain to resolve to an undeveloped webpage. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Further, it is apparent from the domain name that Respondent had actual knowledge of Complainant’s rights in the GUESS mark well before the registration of the <guess-it.net> domain name. This has been found to support a claim of bad faith registration. see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds 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 <guess-it.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 11, 2015
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