Guess? IP Holder L.P. and Guess?, Inc. v. Nanda Desta
Claim Number: FA1712001761252
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 Nanda Desta (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fr-guess-enligne.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 December 4, 2017; the Forum received payment on December 4, 2017.
On December 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fr-guess-enligne.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 December 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@fr-guess-enligne.com. Also on December 5, 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 December 28, 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’s contentions can be summarised as follows:
Complainant owns the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered in, inter alia, the USA and Indonesia for clothing.
The Domain Name includes Complainant’s GUESS trade mark along with hyphens, the generic terms ‘fr’ indicating France and ‘enligne’ meaning ‘online’ and is confusingly similar to Complainant’s mark. The addition of the terms ‘fr’ and ‘enligne’ do not distinguish the Domain Name from Complainant’s mark as Complainant operates in France and use of a term meaning ‘online’ increases confusion as Complainant sells extensively on the Internet. The use of hyphens does not impact the analysis of confusing similarity. Similarly, the incorporation of the gTLD .com into the Domain Name is irrelevant to the confusing similarity analysis.
The Domain Name, registered in 2017, is being passively held.
Respondent has no rights or legitimate interests in the subject domain name. Complainant has not authorised Respondent to use its mark. Passive holding is not a bona fide offering of goods or services or a legitimate non commercial or fair use. Respondent is not commonly known by the Domain Name.
Registering a confusingly similar domain name to Complainant’s mark when Respondent has no connection with Complainant and failure to make use of the Domain Name is bad faith under Policy 4 (a)(iii). No legitimate use can be made of the Domain Name.
Respondent is currently associated with at least 40 domains many of which include registered trade marks. Respondent is engaged in a pattern of registering domain names for profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered in, inter alia, the USA and Indonesia for clothing.
The Domain Name registered in 2017 has not been used. Respondent owns a number of domain names in which the trade marks of third parties with a reputation are clearly recognisable.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Guess? IP Holder L.P. and Guess?, Inc. are the named Complainants. The Complaint does not address the Forum’s Supplemental Rule 1(e). However, the Panel agrees for these purposes that it seems likely that Complainants are in the same group. The Panel therefore treats the named Complainants as a single entity and all references herein to “Complainant” are to be understood in that way. See, e.g., Guess? IP Holder L.P. and Guess? Inc. v. Protection of Private Person, FA1736058 (Forum July 16, 2017).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s GUESS mark (registered in the USA and Indonesia for clothing with first use recorded as 1981), hyphens, ‘fr’ a geographical designation indicating France, the generic term ‘enligne’ meaning ‘online’ and the gTLD .com.
Punctuation marks such as hyphens and the addition of generic terms which are commonly related to retail services such as ‘online’ or its foreign language equivalents such as ‘enligne’ do not serve to distinguish the Domain Name from Complainant’s GUESS mark which is still identifiable within the Domain Name and the additional word ‘enligne’ meaning ‘online’ may give the impression that the site attached to the Domain Name is an online site associated with Complainant. 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 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).) Geographical designations such as ‘fr’ meaning France do not serve to distinguish the Domain Name from Complainant’s GUESS mark. See Doosan Corporation v philippe champain, FA 1636675 (Forum Oct 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity).
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 typically 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
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
There has been no use of the mark. Use of a domain name to resolve to an inactive web site is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy 4 ( c ) (i) or (iii). See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i). )
As such the Panel 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 has not answered this Complaint or explained why it should be allowed to register a domain name containing Complainant’s mark. Complainant alleges that Respondent was aware of Complainant and its business at the time of registration and Respondent has not spoken up to say this is not the case.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Guess is a dictionary word, but the combination of this designation with a geographical term and the generic term ‘online’ suggests a business called ‘Guess’ and not the generic dictionary meaning. Further there is evidence that Respondent owns a number of domain names in which the trade marks of third parties with a reputation are recognisable.
Under Policy 4 (b)(ii) bad faith may be established through a pattern of registration and use of domain names to prevent a complainant from reflecting its mark in a corresponding domain name. See Stevens v Modern Ltd. -Cayman Web Dev., FA 250005 (Forum May 17, 2004)(‘Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4 (b)(ii)).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith 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 <fr-guess-enligne.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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