Guess? IP Holder L.P. and Guess?, Inc. v. Louis Klarevas / Web Development LLC
Claim Number: FA1707001739474
Complainants are Guess? IP Holder L.P. and Guess?, Inc. ("Complainants"), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, U.S.A. Respondent is Louis Klarevas / Web Development LLC ("Respondent"), New York, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessperfumes.com>, registered with GoDaddy.com, 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.
David E. Sorkin as Panelist.
Complainants submitted a Complaint to the Forum electronically on July 11, 2017; the Forum received payment on July 11, 2017.
On July 12, 2017, GoDaddy.com, LLC confirmed by email to the Forum that the <guessperfumes.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 July 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@guessperfumes.com. Also on July 13, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 August 3, 2017, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainants requests that the domain name be transferred from Respondent to Complainants.
A. Complainants
Complainants have used the GUESS brand and trademark for more than thirty years in connection with men's and women's apparel and related goods, including perfume. (The Panel notes that Complainants have properly been permitted to proceed jointly in prior proceedings conducted under the Policy.) Complainants and their distributors and licensees operate more than 1,300 stores and have made billions of dollars of sales under the GUESS mark. Complainants own numerous trademark registrations for the mark in the United States and other jurisdictions throughout the world. Complainants assert that the mark enjoys worldwide recognition and has become famous as a result of longstanding use.
The disputed domain name <guessperfumes.com> was registered in November 2004. Complainants state that the domain name does not resolve to a website, and assert that Respondent is passively holding the domain name with no legitimate noncommercial or fair use. Complainants state further that they have not licensed Respondent to use the GUESS mark; that Respondent has no legal relationship with Complainants that would entitle Respondent to use the mark; and that Respondent is not commonly known by the domain name.
Complainants contend on the above grounds that the disputed domain name is confusingly similar to Complainants' GUESS mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainants have rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Complainants 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 Complainants have 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 Complainants' 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 disputed domain name <guessperfumes.com> combines Complainants' registered GUESS mark with the generic term "perfumes," which refers to a category of Complainant's products, and the ".com" top-level domain. These additions do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Guanjing & Daziran, FA 1576019 (Forum Oct. 8, 2014) (finding <guessjeansoutlet.com> confusingly similar to GUESS); ZINO Davidoff SA v. Yang Yong, D2013-0410 (WIPO May 14, 2013) (finding <davidoffperfumes.com> confusingly similar to DAVIDOFF). The Panel therefore considers the domain name to be confusingly similar to a mark in which Complainants have rights.
Under the Policy, Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name combines Complainants' famous registered mark with a generic term for its products. It was registered without Complainants' authorization, and as far as the Panel can tell Respondent has neither used the domain name nor undertaken any preparations for such use. Complainants have made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainants have sustained their burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally,
Complainants must show that the disputed domain name was registered and is
being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may
be shown by evidence that a domain name was acquired "primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of [Respondent's] documented out-of-pocket costs directly related to the
domain name."
Passive holding (nonuse) of a domain name may be consistent with a finding of bad faith under limited circumstances. The WIPO Jurisprudential Overview lists four factors relevant to this question: "(i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.3 (3d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview3.0/#item33. At least three of those four factors are present here.
In this case the Panel considers it appropriate to infer that Respondent registered and is holding the disputed domain name in order to capitalize on its trademark value, most likely with the intent to profit from a possible sale to Complainants or a competitor thereof. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessperfumes.com> domain name be TRANSFERRED from Respondent to Complainants.
David E. Sorkin, Panelist
Dated: August 14, 2017
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