Guess? IP Holder L.P. and Guess?, Inc. v. kai li
Claim Number: FA1805001787744
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 kai li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-factory.us.com>, registered with 1API GmbH.
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.
Charles A. Kuechenmeister
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on May 21, 2018.
Complainant submitted a Complaint to the Forum electronically on May 21, 2018; the Forum received payment on May 21, 2018.
On May 22, 2018, 1API GmbH confirmed by e-mail to the Forum that the <guess-factory.us.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On May 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 12, 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@guess-factory.us.com. Also on May 23, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 the CentralNic 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 CDRP Policy, the 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.
PRELIMINARY ISSUES
Multiple Complainants
Two Complainants, Guess? IP Holder L.P., and Guess?, Inc., filed this administrative proceeding. The relevant rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e). Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” 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.” 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 this case, there is no evidence of any licensing arrangement between the two named Complainants. The Registration Certificates for the GUESS? mark submitted as Complaint Exhibit D all show Guess?, Inc. as the registered holder of that mark, and there is no reference on any of them to Guess? IP Holder L.P. Further, while the name of that entity strongly suggests that it could be a holding company for the Guess?, Inc. trademark portfolio, the Complaint does not say what it is. It does not explain how the two entities might be related, or offer any factual or legal basis to demonstrate how Guess? IP Holder L.P. might have standing to assert claims regarding the disputed domain name. Nevertheless, the Complaint clearly states that both entities collectively own the trademark registrations, and it expressly identifies both entities as being included in the term “Guess?” throughout the Complaint. Thus, while specific information about the relationship between these entities is lacking, it is clear from the way the Complaint is drafted that Guess?, Inc., the registered holder of the trademarks, considers both entities as having common interests as regards the GUESS? mark and the domain name. On balance, the Panel is satisfied that there is a sufficient nexus between the named Complainants to enable each of them to claim rights in the domain name, and will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to both named Complainants.
A. Complainant
Complainant designs, markets and distributes its collections of women’s and men’s apparel worldwide. Complainant has rights in the GUESS? mark based upon its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). Respondent’s <guess-factory.us.com> domain name (the ”Domain Name”) is confusingly similar to Complainant’s mark as it incorporates the entire GUESS name, merely deleting the question mark, and adding a hyphen, the descriptive term “factory,” the country code (“ccTLD”) “.us”, and the generic top level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the Domain Name. It is not making a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, it uses the Domain Name to offer counterfeit goods that compete directly with Complainant’s business. It is not commonly known by the Domain Name, nor is Respondent sponsored by or affiliated with Complainant. Complainant has not given Respondent permission to use the mark.
Respondent registered and uses the Domain Name in bad faith. It is using the confusingly similar Domain Name to attract and then redirect users to Respondent’s website to sell counterfeit imitations of Complainant’s goods. In addition, Respondent provided false contact details to the registrar, CentralNic. Finally, Respondent had actual knowledge of Complainant’s mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 CDRP 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. 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), 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 Panel makes the findings set forth below with respect to the Domain Name.
Complainant registered its GUESS? mark with the USPTO (Reg. No. 1,433,022) on March 17, 1987. See, Complaint Exhibit D. This registration is sufficient to demonstrate Complainant’s rights in that mark for the purposes of CDRP Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Domain Name is confusingly similar to Complainant’s marks, as it fully incorporates the GUESS element of it, merely omitting the question mark, and adding a hyphen, the dictionary word “factory,” the country code “us,” and the generic top-level domain (“gTLD”) “.com.” These changes are insufficient to distinguish a domain name from an incorporated mark for the purposes of CDRP Policy ¶ 4(a)(i). Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly similar to the GUESS? mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under CDRP Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that the respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
CDRP Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of CDRP Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it redirects Internet users to its web site where it offers counterfeit copies of Complainant’s goods for sale, (ii) Respondent is not commonly known by the Domain Name, and (iii) Complainant has not licensed or authorized Respondent to use its mark for any purpose whatever. These allegations are supported by competent evidence. According to the WHOIS information submitted as Complaint Exhibit A, the Domain Name is registered to “kai li,” which bears no resemblance to the Domain Name. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized Respondent to use its GUESS? mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, the Domain Name resolves to Respondent’s web site, which offers women’s clothing and accessories for sale, prominently displays the word “GUESS,” and features photos similar to those displayed on Complainant’s web sites (See, Complaint Exhibits C, E and F). Offering counterfeit versions of a complainant’s goods does not qualify as a bona fide offering of goods or services within the meaning of CDRP Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
(v) you have provided false contact details to [the registrar].
The evidence discussed above in connection with the rights or legitimate interests analysis to the effect that the Domain Name resolves to a web site which mimics Complainant’s web site in appearance and offers for sale women’s clothing and accessories, advertised as being Guess products, that compete directly with Complainant’s products is also evidence of bad faith registration and use. See, Complaint Exhibits E and F. Complainant states that the products offered for sale on Respondent’s web site are not genuine GUESS? products, and there is no evidence before this Panel to the contrary. The evidence demonstrates that Respondent is intentionally using the Domain Name to attempt to divert Internet users to its web site for commercial gain by creating a likelihood for confusion as to the source, sponsorship, affiliation or endorsement of its web site. Sales of counterfeit versions of a complainant’s products from a confusingly similar domain name for a respondent’s profit is clear evidence of bad faith registration or use within the meaning of CDRP Policy ¶ 4(b)(iv). Afliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products.).
Complainant argues also that Respondent’s bad faith registration and use of the Domain Name is further demonstrated by the fact that he registered it with full knowledge of Complainant’s rights in the GUESS? mark. As demonstrated by the registration statements for the GUESS? mark, Complainant has used that mark since the early 1980s (See, Complaint Exhibit D), and the mark has become famous throughout the world. Respondent registered the Domain Name in October 2017 (See, Complaint Exhibit A). It is thus abundantly clear that Respondent knew of Complainants’ marks when it registered the Domain Name. Indeed, it is evident that Respondent registered it precisely because it does contain Complainant’s mark and would likely attract Internet traffic to its site. As noted by another panel several years ago, given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of CDRP Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns 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). Respondent clearly knew of Complainant and its mark when it registered the Domain Names, and this is clear evidence of bad faith registration.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of CDRP Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the CentralNic Dispute Resolution Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guess-factory.us.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: June 18, 2018
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