Guess? IP Holder L.P. and Guess?, Inc. v. Jerry Guess / Guess & Co. Corporation
Claim Number: FA1805001784591
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 Jerry Guess / Guess & Co. Corporation (“Respondent”), represented by Mark Wampler of Mason Counsel Group, LLC, Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessandco.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2018; the Forum received payment on May 1, 2018.
On May 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guessandco.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2018 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@guessandco.com. Also on May 4, 2018, 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 24, 2018.
On May 31, 2018, Complainant filed an additional submission. On the same date the FORUM advised Complainant that the submission was received after the deadline for submissions and that the Forum did not consider it to be in compliance with Supplemental Rule #7. However, the submission was forwarded to the Panel to decide whether it should be considered in the proceeding.
On June 1, 2018 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.
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.”
The Complainant Guess? IP Holder L.P. is a Delaware limited partnership that is effectively wholly owned by Guess, Inc. Guess? IP Holder L.P. was created in order to hold and license some, but not all, Guess trademark assets. Guess? IP Holder L.P. licenses trademarks to Guess, Inc. for use and further sub-licensing to entities not within the Guess corporate family. See Compl. Ex. E. The trademark activities of these two companies, including trademark selection, adoption, use, quality, and enforcement are coordinated and managed together. The entities are related and constitute a single source of goods and services.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding and the matter may go forward on that basis. Accordingly, in this decision, the Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain name at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that Complainant has presented evidence demonstrating that the listed entities are jointly controlled by a single party who is using multiple aliases. The matter may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Guess? IP Holder L.P. and Guess? (collectively “Complainants”), own the world-famous Guess brand, which they have used for over 30 years in connection with their highly successful lines of men’s and women’s apparel and related goods and services. Complainant established rights in its GUESS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,271,896, registered Mar. 27, 1984). See Compl. Ex. D. Respondent’s <guessandco.com> is confusingly similar to Complainant’s GUESS mark because it merely appends the generic terms “and” and “co” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <guessandco.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its GUESS mark in any fashion. Further, Respondent is not commonly known by the disputed domain name. Additionally, Respondent is not using the <guessandco.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website containing content related to the energy, industrial, health, and real estate sectors. Further, Respondent uses the domain name in connection with a fraudulent scheme.
Respondent registered and used the domain name in bad faith. Respondent has established a pattern of bad faith registrations through its past involvement in UDRP proceedings. Further, Respondent registered the <guessandco.com> domain name with full knowledge of Complainant’s rights in the GUESS mark.
B. Respondent
Respondent, Guess & Co. Corporation, is a current, active and registered North Carolina corporation, and is a global diversified solutions company with unites in energy, industrial, health care, and real estate, providing solutions services to communities companies, and governments.
Respondent concedes that the disputed domain name is confusingly similar to Complainant’s GUESS mark.
Respondent has a legitimate interest in the disputed domain name and is using it in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the domain name to resolve to a website that relates to its active business pursuits in the energy, industrial, health, and real estate sectors. Further, Complainant’s argument that Respondent’s Guess & Co. Corporation is not engaged in bona fide business is incorrect.
Respondent did not register the domain name in bad faith. Respondent’s business name and the associated <guessandco.com> domain name relate to the founder’s surname, Jerry Guess, not to Complainant’s GUESS mark. Further, Complainant failed to prove Respondent used the domain name in connection with a fraudulent scheme.
Complainant has engaged in reverse domain name hijacking by bringing this claim.
C. Additional Submissions
1. Guess? IP Holder L.P. and Guess? (collectively “Complainants”), own the world-famous Guess brand, which they have used for over 30 years in connection with their highly successful lines of men’s and women’s apparel and related goods and services.
2. Complainant established registered trademark rights in its GUESS mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,271,896, registered Mar. 27, 1984).
3. Respondent registered the disputed domain name on July 21, 2017.
4. The domain name resolves to a website which purports to contain content related to the energy, industrial, health, and real estate sectors but which the Panel finds it does not do.
5. There is no evidence that Respondent is commonly known by the disputed domain name. There is no evidence showing that Respondent has a right or legitimate interest in the disputed domain name and the Panel so finds.
6. There is evidence showing that Respondent registered and used the disputed domain name in bad faith and the Panel so finds.
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: the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GUESS mark. Complainant argues that Respondent’s <guessandco.com> is confusingly similar to Complainant’s GUESS mark because it merely appends the generic terms “and” and “co” and the gTLD “.com” to the GUESS trademark. The addition of a generic term and a gTLD may not sufficiently distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Accordingly, the Panel holds that Respondent’s <guessandco.com> is confusingly similar to Complainant’s GUESS mark Policy ¶ 4(a)(i). This is because an objective bystander would assume that the domain name was invoking the corporate name of Complainant and that the domain name related to the corporate activities of Complainant.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
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 trademark and to use it in its entirety in the domain name adding only the generic expressions “and” and “co”;
(b) Respondent registered the disputed domain name on July 21, 2017;
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
As Complainant has made out a prima facie case, the Panel will consider the case advanced by Respondent and decide if it is has rebutted that prima facie case.
Complainant has submitted that Respondent does not have rights and legitimate interests in the <guessandco.com> domain name. Respondent submits that it does have such rights and legitimate interests and that it has them on several grounds, the first of which is that it is commonly known by the domain name. WHOIS information may be considered when determining whether a respondent is commonly known by the disputed domain name but of course the whole of the evidence must be taken into account. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Complainant contends that the WHOIS information of record lists “Jerry Guess / Guess & Co. Corporation” as the registrant. Presumably, Respondent’s argument is that the combined “Jerry Guess / Guess & Co. Corporation” is commonly known as “guessand co” which seems highly unlikely and there is no evidence to that effect. Moreover, the actual name of the registrant is “Jerry Guess” and it is even more unlikely that he is known as “guessand co”, despite his apparent inventiveness in using names other than his own. In any event, if a respondent wishes to make out this defence, it must go further than simply assert it, and must adduce evidence that someone, if not people in general, actually knows him by the domain name, as the fortunate Mr. A R Mani was able to do in G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537. However, there is no evidence to that effect at all. Accordingly, the defence fails as, on the evidence, Respondent is not commonly known by the domain name.
The second leg of Respondent’s case is based on its denial of Complainant’s contention that Respondent is not using the <guessandco.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. If that case were made out by Respondent it would have established a complete defence to the claim. However, Complainant casts doubt on the veracity and persuasiveness of the material included by Respondent in its corporate brochure and on its website and on whether Respondent has been conducting any bona fide offering of goods or services at all. Respondent has considerable difficulty in establishing that it is a going concern and that it is actively engaged in performing work that can fairly be described as a “bona fide offering of goods and services”, let alone the grandiose schemes with which it claims to have been involved. Not the least of its difficulty is that the Panel does not accept any of Respondent’s evidence on this issue. Even if that evidence were accepted, it is not evidence that Respondent is performing or has at any time performed a bona fide offering of goods or services, because the evidence does not show that Respondent does anything at all. Such activities can easily be proved, by a description of what the goods and service in question are and what Respondent has done with them. It should be able to point to projects, even in their early, formative stages and also to company records, receipts and correspondence that show what goods or services it has sold or even tried to sell. But none of this has been forthcoming, despite the fact that such evidence must be within the knowledge of Respondent if it exists at all. All that Respondent’s material shows, apart from folie de grandeur, is that it offers ‘solutions’, which is so vague a statement as to be virtually meaningless and which is made even less persuasive by the photographs allegedly illustrating its projects which are clearly stock photographs taken from the internet. Moreover, there is no evidence at all that Respondent has ever provided any solutions or even a single item of any such goods or services having been offered to anyone. As Complainant points out in its additional submission and as has been verified by the Panel’s own close examination of the material relied on by Respondent, that material is extremely unreliable, highly suspicious and goes nowhere near showing on the balance of probabilities that Respondent has used or made demonstrable preparations to use the domain name for a bona fide offering of goods or services.
In addition, much of the conclusion just expressed is naturally colored by evidence adduced by Complainant showing Respondent’s dubious commercial dealings in the past and his familiarity with the criminal justice system. Complainant claims that Respondent uses the domain name in connection with a fraudulent scheme because Respondent has a well documented and very serious pattern of fraudulent business activities in the past, raising at least the presumption that this is continuing in one form or another and will probably continue. Respondent denies this but its arguments to that end are evasive and have no merit and are based on no evidence at all. The Panel has examined Respondent’s criminal record as established by evidence adduced by Complainant and finds that it justifies Complainant’s submission that Respondent has been engaged in criminal activity for over a decade and that this record has resulted in a series of criminal court proceedings. Use of a domain name in furtherance of a fraudulent scheme is not a bona fide offering or fair use under the Policy. See Juno Online Serves., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). It is of course difficult to be precise with respect to the extent of these activities, but enough has been revealed by Complainant’s evidence to raise a serious question as to Respondent intentions with respect to the use of the domain name if it retains it. However, the Panel has no hesitation in concluding that Respondent’s interest in registering the domain name is not that it reflects the name of its founder, but that it reflects a famous trademark that Respondent can trade on for his own advantage by pretending that Respondent is a going concern and is therefore associated in some way with Complainant. The Panel therefore rejects any notion that Respondent has been engaged in any bona fide offering of goods or services.
Respondent has not made out or argued for any other basis on which it could be said that it has a right or legitimate interest in the disputed domain name. The Panel therefore concludes that it does not have any such right or interest.
Complainant has thus made out the second of the three elements that it must establish.
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 contends that Respondent has established a pattern of bad faith domain name registrations. A respondent’s pattern of bad faith registration may be evidence of bad faith registration in the case at hand. See Greek town Casino, LLC v. Daniel Kirchhoff c/o Unite GmbH, FA1308001513182 (Forum Sept. 17, 2013) (“The Panel finds that Respondent’s implication in a pattern of bad faith use and registration serves as evidence of Policy ¶ 4(b)(ii) bad faith use and registration in the instant proceeding as well.”). Further, a pattern of bad faith registrations may be established by the respondent’s involvement in prior UDRP decisions. See Liberty Mutt. Ins. Co. v. Bin g Glue, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Complainant alleges that Respondent was the respondent in the case, Guess? IP Holder L.P. and Guess?, Inc. v. Joel Bandy / Guess & Co. Corporation / Corporate Affairs / The Guess Bread Company, Ltd. / The Guess Construction Company, Ltd. / The Guess Private Merchant Company, Ltd., FA 1773878 (Forum Apr. 9, 2018). In that case, the Panel found bad faith registration and use and held that the respondent, Jerry Guess, was investigated, charged, and convicted of various criminal activity in connection with a former business, and that the respondent wanted to begin new business under a different name involving the GUESS mark. See Id. As such, the Panel finds that Respondent has established a pattern of bad faith registrations and a pattern which will continue if it retains registration of the domain name.
Secondly, Complainant argued that Respondent registered the <guessandco.com> domain name with actual and constructive knowledge of Complainant’s rights in the GUESS mark. Arguments of bad faith based on constructive notice are generally not found to be persuasive. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, actual as opposed to constructive knowledge by a registrant of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a) (iii). See Univision Comics Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a) (iii).”). Here, Complainant’s famous GUESS mark has created significant good will and consumer recognition around the world since it was first used by Complainant in 1981. See Compl. p. 3. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent must have had actual knowledge of Complainant’s trademark rights when the <guessandco.com> domain name was registered and subsequently used. Having regard to the totality of the evidence, the Panel also finds that Respondent registered the domain name and used it because of the fame of the GUESS Mark and in the hope that Respondent could create the illusion that it was in some way associated with or had the approval of Complainant. That clearly amounts to bad faith registration and use.
Finally, in addition and having regard to the totality of the evidence and quite apart from the specific indicia in the Policy that constitute bad faith, 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 has 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 <guessandco.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 4, 2018
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