Guess? IP Holder L.P. and Guess?, Inc. v. DEHAI LIU
Claim Number: FA1711001757548
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 DEHAI LIU (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-sale.com> (the Domain Name), 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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2017; the Forum received payment on November 7, 2017.
On November 8, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guess-sale.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 November 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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-sale.com. Also on November 8, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’ contentions can be summarised as follows
Complainants own the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered as a trade mark in the USA and China for clothing.
The Domain Name is confusingly similar to Complainant’s GUESS mark, merely adding the descriptive term ‘sale’ and a hyphen which do not distinguish the Domain Name from Complainant’s mark. In fact the addition of ‘sale’ increases the likelihood of confusion and the impression that the web site attached to the Domain Name is affiliated with Complainant.
The addition of the gTLD .com is irrelevant to the confusing similarity analysis.
Respondent has no rights or legitimate interest in the Domain Name. Respondent is not commonly known by the Domain Name Complainant has not licensed Respondent to use Complainant’s mark. The use is commercial so this cannot be legitimate non commercial or fair use of the Domain Name.
The Domain Name is being used to sell counterfeit goods competing with Complainant which is not a bona fide offering of goods or services.
The Domain Name has been registered and used in bad faith. Respondent has no connection with Complainant the trade mark owner. Use of a domain name confusingly similar to a Complainant’s mark to redirect an Internet user to a web site which offers goods in direct competition to Complainant’s goods satisfies 4 (b)(iv) and 4 (b)(iii) of the Policy.
Respondent’s site prominently displays Complainant’s GUESS mark and includes copyright protected photographs owned by Complainant showing actual knowledge of Complainant and its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants own the GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered as a trade mark in the USA and China for clothing.
The Domain Name, registered in 2017, has been used to offer clothing which competes with Complainant. Complainant’s trade mark GUESS is used prominently on the web site attached to the Domain Name in a highly similar font to that used by Complainant suggesting the goods are official when they are not.
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(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 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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint consists of Complainant’s GUESS mark (registered in the USA and China for clothing with first use recorded as 1981), a hyphen, the generic term ‘sale’ and the gTLD .com.
Punctuation marks such as hyphens and generic terms which are commonly related to the retail business and services such as ‘sale’ do not serve to distinguish the Domain Name from Complainant’s GUESS mark which is still identifiable within the Domain Name. See Microsoft Corporation v Thong Tran Thanh, FA 1653187 (Forum Jan 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and a top level domain, the differences between the domain name and the mark it contains are insufficient to differentiate one from the other for the purposes of the Policy). See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).)
The gTLD .com does not serve to distinguish the Domain Name from Complainant’s GUESS mark. See Trip Network Inc. v Alviera, FA 914943 (Forum Mar 27, 2007) (concluding that the addition of a gTLD to a domain name is irrelevant to a Policy 4 (a)(i) analysis).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by Complainant’s GUESS mark. Complainant has not authorised Respondent to use Complainant’s GUESS mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services if it uses the name to divert Internet users to a web site competing with Complainant under Complainant’s mark and offering counterfeit goods. See eLuxury.com Inc. v WangJunJie, FA 1075554 (Forum Nov 30, 2007)(concluding that the sale of counterfeit products is evidence that Respondent is not making a bona fide offering of good or services or a legitimate noncommercial or fair use of a disputed domain name). It is clear from the evidence that Respondent has used the site attached to the Domain Name for a competing retail site selling clothing which is not connected with Complainant and has presenting those goods as the goods of Complainant when they are not using Complainant’s brand on the site in a highly similar font to that used by Complainant amounting to passing off.
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent's use of the site attached to the Domain Name is commercial and it is using the site to make a profit from competing products not associated with Complainant in a confusing manner presenting them as the goods of Complainant and thereby disrupting Complainant’s business. This is registration and use in bad faith. See H-D USA LLC v Janis Vecvanags, FA 1503001608165 (Forum Apr 6, 2015) (holding that Respondent’s use of the disputed domain name to sell counterfeit Harley Davidson goods disrupted Complainant’s business and indicated bad faith under Policy 4 (b)(iii).)
The prominent use of Complainant’s GUESS mark on Respondent’s site in a form highly similar to the font used by Complainant to present its brand is passing off. The usage of Complainant’s GUESS mark in relation to competing products not connected with Complainant in a font highly similar to Complainant’s way of presenting its brand name on the website attached to the Domain Name is a misrepresentation and because of the use of this highly similar font and Complainant’s GUESS mark in the Domain Name and on the site attached to the Domain Name, Respondent’s site is highly likely to be confused for a site belonging to or connected with Complainant and offering Complainant’s products when it is offering goods of a third party manufacture instead. This is creating a likelihood of confusion as to the source of the products on Respondent’s web site and is also bad faith registration and use under Policy 4 (b)(iv). See H-D Michigan, LLC v Ross, FA 1250712 (Forum Apr 23, 2009)(determining that Respondent’s selling of counterfeit goods creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and allows Respondent to profit from that confusion. )
The use of Complainant’s brand in a highly similar font to that use by Complainant and photographs belonging to Complainant on the web site attached to the Domain Name indicates Respondent had actual knowledge of Complainant and its rights at the time of registration and throughout use.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site and the products offered on it under s4 (b)(iv) of the Policy. This is also clearly designed to disrupt the business of a competitor and constitutes bad faith under s 4 (b)(iii) of the Policy.
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy.
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-sale.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 11, 2017
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