DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. He Bin De

Claim Number: FA1811001815029

 

PARTIES

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 He Bin De (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guesscompete.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..

 

PANEL

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.

 

Sebastian M W Hughes as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint (in English language) to the Forum electronically on November 5, 2018; the Forum received payment on April 24, 2017.

 

On November 6, 2018, Alibaba Cloud Computing (Beijing) Co Ltd confirmed by e-mail to the Forum that the <guesscompete.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co Ltd and that Respondent is the current registrant of the name.  Alibaba Cloud Computing (Beijing) Co Ltd has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co Ltd 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 9, 2018, the Forum served the Complaint and all Annexes, setting a deadline of November 29, 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@guesscompete.com.  Also on November 9, 2018, the Chinese language 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 (Chinese language) Response was received and determined to be complete on November 26, 2018.

 

An additional timely (English language) submission by Complainant was filed November 28, 2018.

 

An additional timely (Chinese language) submission by Respondent was filed November 29, 2018.

 

On December 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Guess? IP Holder L.P. is a wholly-owned entity of Guess?, Inc. and a company incorporated in the State of Delaware USA to own and license the trademarks used by Guess?, Inc., including the trademark GUESS (the “Trademark”). Complainant Guess? IP Holder L.P. is the owner of numerous registrations in jurisdictions worldwide for the Trademark, including US registration No. 1,433,022, with a registration date of March 17, 1987.  Complainant has used the Trademark for over 30 years in respect of clothing, footwear and related items.

 

The domain name is confusingly similar to the Trademark.

 

Respondent has no rights or legitimate interests in the domain name.

 

Respondent has registered and used the domain name in bad faith. Respondent has offered to sell it, initially for US$90 on the website to which domain name has been resolved (the “Website”), and subsequently for US$200,000 in response to an offer from Complainant to buy the domain name for US$90. The Website also contains with sponsored links relating to clothing.

 

B. Respondent

Respondent legitimately registered the domain name and is the legal owner of the domain name.

 

The words “guess” and “compete” are generic terms with no special meaning.

 

Respondent intends to make use of the domain name for a legitimate website.

 

Respondent’s offer to sell the domain name to Complainant was merely negotiation.

 

C. Complainant’s Additional Submissions

Respondent does not deny knowledge of Complainant and its Trademark.

 

Respondent has failed to adduce any evidence to show rights or legitimate interests, or to show lack of bad faith.

 

D. Respondent’s Additional Submissions

Respondent has not engaged in bad faith.

 

GUESSCOMPETE is not a trademark in China.

 

All of Complainant’s trademark registrations in China are for the Trademark, not for GUESSCOMPETE.

 

FINDINGS

Complainant has established all the elements entitling it to transfer of the domain names.

 

DISCUSSION

Language of the Proceedings

Complainant requests that the language of the proceeding be English. Respondent requests that the language of the proceeding be Chinese.

 

Pursuant to Rule 11(a), the Panel determines that Complainant has demonstrated the likely possibility that Respondent is conversant in English. Specifically, Complainant relies upon the English language email correspondence sent to the Forum by Respondent.

 

The Panel has also taken into account the need to avoid delay and additional costs. In the circumstances, the Panel has decided that (1) it will accept the filing of the Complaint and the Complainant’s Additional Submissions in English; (2) it will accept the filing of the Response and the Respondent’s Additional Submissions in Chinese; and (3) it will render this Decision in English.

 

Substantive Elements of the Policy

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.

 

Identical and/or Confusingly Similar

The domain name is confusingly similar to the Trademark. It incorporates the entirety of the Trademark together with the word “compete”.

 

Rights or Legitimate Interests

Respondent has failed to demonstrate any rights or legitimate interests in the domain name.

 

Respondent does not possess any trademark rights in respect of the domain name.

 

Respondent is not commonly known by the Trademark and is not making a bona fide non-commercial use of the domain name.

 

Registration and Use in Bad Faith

Respondent has registered and used the domain name in bad faith (under paragraphs 4(b)(ii) and 4(b)(iv) of the Policy) by:

 

1.         Offering it for sale on the Website for US$90;

 

2.         Offering it for sale to Complainant for US$200,000; and

 

3.         Resolving it to the Website, which contains sponsored links to clothing related websites.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <guesscompete.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sebastian M W Hughes, Panelist

Dated:  December 10, 2018