Guess? IP Holder L.P. and Guess?, Inc. v. Jurgen Neeme / DOMAINSALE.IO
Claim Number: FA1711001758566
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is Jurgen Neeme / DOMAINSALE.IO (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess.us>, registered with NameCheap, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 14, 2017.
On November 15, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <guess.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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.us. Also on November 15, 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 November 22, 2017.
On November 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a global manufacturer and retailer of men’s and women’s apparel, and related goods and services. Complainant uses the GUESS mark in conjunction with its business practices. Complainant registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022; registered Mar. 17, 1987). See Compl. Ex. D. Complainant also registered the GUESS mark with the Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 000135681, registered Oct. 15, 1998). Id. Respondent’s <guess.us> is identical to Complainant’s GUESS mark because it incorporates the mark in its entirety, adding the “.us” country code top level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <guess.us> domain name. Respondent does not own a trade or service mark identical to the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the GUESS mark in any regard. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain that does not mislead internet users or tarnish Complainant’s GUESS mark. Respondent’s <guess.us> domain name resolves to a series of websites in direct competition with or unrelated to Complainant’s business. See Compl. Ex. E.
Respondent registered and is using the <guess.us> domain name in bad faith. The disputed domain name attracts internet users to Respondent’s website for commercial gain. Complainant’s GUESS mark is a fanciful mark. The GUESS mark is obviously connected with Complainant’s business and <guess.us> clearly references the sale of Complainant’s goods.
B. Respondent
Respondent made the following contentions.
Respondent sent two emails to the FORUM which Respondent referred to as a Response and in which it was submitted in substance that the disputed domain name was a generic and dictionary word. Respondent also submitted that it has a portfolio of twenty-six thousand domain names.
1. Complainant is a United States company that is global manufacturer and retailer of men’s and women’s apparel, and related goods and services.
2. Complainant registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022; registered Mar. 17, 1987).
3. Respondent registered the disputed domain name on September 26, 2017.
4. Respondent’s <guess.us> domain name resolves to a series of websites promoting and selling goods some of which are allegedly GUESS goods and others of which are in direct competition with or unrelated to Complainant’s business.
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.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant is a global manufacturer and retailer of men’s and women’s apparel, and related goods and services. Complainant uses the GUESS mark in conjunction with its business practices. Complainant submits that it registered the GUESS mark with USPTO (e.g., Reg. No. 1,433,022; registered Mar. 17, 1987). See Compl. Ex. D. Complainant also claims it registered the GUESS mark with OHIM (e.g., Reg. No. 000135681, registered Oct. 15, 1998). Id. Registration of a mark with multiple government trademark agencies is sufficient to show rights in a mark. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Therefore, the Panel finds that Complainant’s registrations with USPTO and OHIM are sufficient to show rights to the GUESS mark.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GUESS mark. Complainant submits that Respondent’s <guess.us> domain name is identical to Complainant’s GUESS mark because it incorporates the mark in its entirety, adding the “.us” ccTLD. The addition of a ccTLD to a fully incorporated mark does not distinguish the disputed domain name from the original mark. MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”). As such, the Panel finds that Respondent’s <guess.us> domain name is identical to Complainant’s GUESS mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GUESS mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on September 26, 2017.
(c) The domain name resolves to a series of websites promoting and selling goods some of which are allegedly GUESS goods and others of which are in direct competition with or unrelated to Complainant’s business.
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <guess.us> domain name. Complainant maintains that Respondent does not own a trade or service mark identical to the disputed domain name. Absent evidence to the contrary, a respondent lacks ownership of a trademark identical to the complainant’s mark. BILD Gmbh & Co. KG v. James Cousin, FA 1641283 (Forum Nov. 11, 2015) (“Respondent has failed to respond in this proceeding, and has not provided any evidence to indicate it owns a mark identical to the <bildpl.us> domain name. Such a lack of evidence is sufficient to allow this Panel to find Respondent has no rights to such a mark.”). The Panel finds that Respondent does not have ownership of a trademark identical to Complainant’s GUESS mark for the purposes of Policy ¶ 4(c)(i);
(f) Complainant argues that Respondent is not commonly known by the disputed domain name. Moreover, Complainant avers that it has not authorized or licensed Respondent to use the GUESS mark in any regard. WHOIS information associated with this case identifies Respondent as “Jurgen Neeme” of “DOMAINSALE.IO.” The respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Likewise, absent affirmative evidence in the record, the respondent lacks authorization to use the complainant’s mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Therefore, when nothing in the record “implies that [Respondent] is ‘commonly known by’ the disputed domain name” or that Complainant authorized Respondent’s use of the GUESS mark, as is the case in this proceeding, the Panel determines that Respondent is not commonly known by the <guess.us> domain name . Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003);
(g) Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain that does not mislead internet users or tarnish Complainant’s GUESS mark. In support of its contention, Complainant demonstrates that Respondent’s <guess.us> domain name resolves to a series of websites promoting and selling goods in direct competition with or unrelated to Complainant’s business. See Compl. Ex. E. The use of a domain name for commercial benefit by diverting Internet users to a website that sells goods and services similar to those offered by the complainant or in competition with complainant is not a use in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003). As such, the Panel finds that Respondent lacks rights or legitimate interests in <guess.us> pursuant to Policy ¶¶ 4(c)(ii) or (iv).
All of these matters go to make out the prima facie case against Respondent.
In reply Respondent submits that the domain name consists of a generic or dictionary word. In some circumstances where a domain name consists solely of a generic or dictionary word, the registrant may indeed be able to show that this gives it a right or legitimate interest in the domain name. But that is not so in the present case. A Respondent seeking to rely on this defence must at least give something of the circumstances leading to the use of the word in question and where it has used the domain name thus created it must not have been used for targeting the trademark owner or to promote the sale of competing goods or services. In the present case, Respondent has shown no reason for using the generic word and it is only too plain why it chose the word and used it in its domain name. That is so because Respondent is targeting Complainant, as Complainant’s evidence is that Respondent has indeed used the domain name to resolve to a website given over to the promotion and sale of goods that are claimed to be GUESS goods and other goods that are in competition with those of Complainant. Thus, the evidence is that Complainant is a manufacturer and retailer of men’s and women’s apparel, and related goods and services and Respondent is using its domain name to promote Macy’s store and in particular competing clothing and accessories, Amazon, where clothing, shoes and handbags claimed to be GUESS goods are promoted and available for sale, and Shop Like Her, promoting and selling apparel, cosmetics and sunglasses in competition with those of Complainant. Accordingly, Respondent is using Complainant’s trademark to sell rival and competing goods. Clearly, that does not give Respondent a right or legitimate interest in the domain name but the opposite.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant maintains that Respondent registered or is using the <guess.us> domain name in bad faith. Complainant submits that the disputed domain name attracts internet users to Respondent’s website for commercial gain as it is being used to promote and sell goods that are alleged to be GUESS brand goods as well as brands that are clearly in competition with those of Complainant. The use of a disputed domain name to promote goods and services of the trademark owner without permission and goods in direct competition with or unrelated to Complainant’s business evinces Policy ¶ 4(b)(iv) bad faith. ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to benefit commercially from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). The Panel so finds in this proceeding.
Secondly, Complainant argues that the GUESS mark is fanciful, indicating that the GUESS mark is obviously connected with Complainant’s business and the <guess.us> domain name clearly references the sale of Complainant’s goods. “Fanciful marks are referred to as the ‘strongest’ of all marks, in that their novelty creates a substantial impact on the buyer's mind—if sufficiently advertised and recognized.” McCarthy on Trademarks and Unfair Competition, § 11:6 (4th ed. 2000). The use of a fanciful mark in a disputed domain name infers that the respondent had actual knowledge of the complainant and its mark. See G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Forum July 31, 2002) (“It is evident that Respondent knew of Complainant’s rights in the CELEBREX mark since Complainant coined [the term “Celebrex”] and Respondent uses the mark in conjunction with marks of Complainant’s competitors.”). Given the evidence provided, the Panel concludes that Respondent’s <guess.us> domain name has been registered and used in bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GUESS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 30, 2017
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