DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. Akihiko Sakuma / Personal

Claim Number: FA1704001725672

 

PARTIES

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 Akihiko Sakuma / Personal (“Respondent”), Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guess-employer.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 6, 2017; the Forum received payment on April 6, 2017.

 

On April 12, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <guess-employer.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names.  GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 April 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2017 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-employer.com.  Also on April 17, 2017, 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 May 5, 2017.

 

On May 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Respondent has agreed to that request.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in GUESS and alleges that the disputed domain name is confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent filed a timely Response which did not address the Policy but which indicated its willingness to transfer the domain name (and its alleged attempt to do so).

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant sells clothing and fashion accessories by reference to the trademark GUESS which is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 1,433,022, registered March 17, 1987; 

2.    the disputed domain name was created after Complainant established trademark rights; and

3.    the domain name is not in use and there is no evidence it has been used in the past.

 

DISCUSSION

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."

 

Preliminary Procedural Issue 1: Multiple Complainants

Paragraph 3(a) of the Rules provides that “[a]ny 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 named complainants: Guess? IP Holder L.P. and Guess?, Inc. The Complaint does not address the Forum’s Supplemental Rule 1(e) at all.  However, for the purposes of Supplemental Rule 1(e) it seems more likely than not that the named complainants are part of the one company group and that the most likely relationship is that of parent and a subsidiary company which owns the parents intellectual property rights (including the USPTO registration nominated above).  In this case the Panel therefore treats the named complainants as a single entity[i] and all references herein to “Complainant” are to be understood in that way.

 

Preliminary Procedural Issue 2: Language of Complaint

The Registration Agreement is written in Japanese and so under Rule 11, Japanese is the language of the proceedings.  Nevertheless, the Panel has the discretion to determine that another language is to be the language of the proceedings after taking into consideration the particular circumstances of the case.[ii]

 

Complainant argues that Respondent’s website displays Complainant’s GUESS trademark and prominently uses English characters.  Those statements are utterly incorrect.  As (correctly) stated elsewhere in the Complaint, the disputed domain name is not in use and does not resolve to a website with any content.

 

Nonetheless, taking its own view of the matter, the Panel notes that the at-issue trademark is an English language word and that Respondent has written to the Forum and has filed its Response in English.  Pursuant to UDRP Rule 11(a), the Panel determines that the proceedings can continue in English and that English is the language of the proceedings.[iii]

 

Preliminary Procedural Issue 3: Consent to Transfer

After receipt of the Complaint, Respondent wrote to the to the Forum stating: “I will not fight in this case and I will not use “guess-employer.com” in the future. We will also transfer the domain if you wish.”  Further, the brief Response reiterates that unconditional willingness to transfer the domain name to Complainant and gives some detail of Respondent’s (unsuccessful) attempt to do so by reference to correspondence with the Registrar.

 

As is usual, after commencement of these administrative proceedings, GMO Internet, Inc. d/b/a Onamae.com placed a hold on Respondent’s account and  Respondent could not transfer the disputed domain name.

 

The Panel has a discretion to either apply the Policy or order a direct transfer of the disputed domain name.  This is a case where the Panel considers it appropriate to order a direct transfer.  There is no evidence that Respondent is a serial cybersquatter or has been involved in other disputes under the Policy.[iv] There has been no use of the domain name – in bad faith, or at all.  Although the Response is perfunctory, it does suggest that the domain name was adopted because of its ordinary dictionary meaning of the words.  No conditions have been attached to transfer, nor any alluded to.  In some instances it makes good sense for Complainant to indicate its agreement to transfer in lieu of application of the Policy but the Panel has determined that this is unneceesary on this occasion.[v]

 

DECISION

For the reasons given, it is Ordered that the <guess-employer.com> domain name be TRANSFERRED from Respondent to Complainant.[vi]

 

 

Debrett G. Lyons, Panelist

Dated: May 22, 2017