Guess? IP Holder L.P. and Guess?, Inc. v. George Johnson
Claim Number: FA1901001825018
Complainants are Guess? IP Holder L.P. and Guess?, Inc. (“Complainants”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is George Johnson (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-eo.com> (“disputed domain name”), registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2019; the Forum received payment on January 14, 2019.
On January 15, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <guess-eo.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 ICANNs Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 15, 2019, the Forum directed Complainant to amend the Complaint to properly identify Respondent and his contact information. An amended Complaint was filed on the same day.
On January 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents registration as technical, administrative, and billing contacts, and to postmaster@guess-eo.com. Also on January 16, 2019, 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 Respondents registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 16, 2019.
An Additional Submission was received on January 17, 2019.
On January 17, 2019, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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.
Complainants request that the domain name be transferred from Respondent to Complainant Guess? IP Holder L.P.
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.”
Complainant Guess? IP Holder L.P. is a Delaware limited partnership that is effectively wholly owned by the Complainant Guess?, Inc. The trademark registration certificates annexed to the Complainant show Guess?, Inc. as the owner of the trademark registrations. Also annexed was a copy of a trademark assignment agreement of certain GUESS-based trademarks and corresponding registrations from Guess?, Inc. to Guess? IP Holder L.P.
The Panel finds in the circumstances of this case that there is a sufficient nexus between both Complainants, both having sufficient interest in the trade mark GUESS and in the disputed domain name which contains the trade mark GUESS. It therefore accepts the filing of the Complaint in the name of both Guess? IP Holder L.P. and Guess?, Inc. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003).
A. Complainants
Complainants own the GUESS brand which is world famous, having been used for more than 30 years in connection with men’s and women’s apparel and related goods.
Complainants’ business started in 1981 in California but has since developed into a global lifestyle brand. Complainant’s goods are sold through the United States, Canada, and worldwide, through direct stores, licensees and/or distributors. Models such as Claudia Schiffer, Eva Herigova, Carla Bruni, and Naomi Campbell launched their careers in the original Guess? campaigns. Complainant is today a two billion dollar multinational retailer.
Complainants operate websites at the domain names <guess.com>, <guess.ca>, <bgyguess.com> and <marciano.com>. Complainants’ e-commerce website is operated from <guess.com>.
Complainants own a multitude of GUESS trademarks which have acquired valuable goodwill and reputation. The GUESS brand name is widely recognized by consumers, not only in the United States, but also throughout the world. Complainants own, inter alia, U.S. Registration Nos. 1,433,022 for GUESS, registered on March 17, 1987; 1,271,896 for GUESS (figurative) registered on March 27, 1984; and 1,299,580 for GUESS (stylized) registered on October 9, 1984.
Complainants, along with their distributors and licensees, now operate over 1,300 stores; these stores are located in premier retailing locations in major markets worldwide.
Respondent registered the disputed domain name on December 19, 2018. The disputed domain name resolves to commercial parking website which hosts pay-per-click (“PPC”) advertisement links. Such use of the disputed domain name to unlawfully misdirect consumers looking for Complainants’ goods is clearly a cybersquatting activity.
The disputed domain name is confusingly similar to Complainant’s GUESS mark as it features the entire word “Guess” which is a trade mark of Complainants and which constitutes the dominant portion of the disputed domain name. The additional letters “eo” and the additional hyphen do nothing to distinguish the disputed domain name from Complainants.
Respondent has no rights or legitimate interests in the disputed domain name. Complainants have not licensed Respondent to use their GUESS trade mark, nor does the Respondent have any relationship with Complainants which would entitle Respondent to use the GUESS trade mark as the dominant part of the disputed domain name.
Respondent’s parking page is populated by PPC advertisements for clothing accessories which compete directly with Complainants. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services.
Respondent is not commonly known by the disputed domain name. His name as listed in the WhoIs information is “George Johnson” and not “guess-eo”.
Respondent has registered and is using the disputed domain name in bad faith. The use of a domain name that is identical or confusingly similar to a complainant’s mark to host a parking page is evidence of bad faith registration and use.
B. Respondent
Respondent stated in his response that he does not have control over the links on the parked domain name, nor does he benefit from them.
Respondent claimed to have “plans to create a site with the idea of 2 battling ideas”, and said that the element “eo” in the disputed domain name is derived from the term “engine optimization”. He said he would “remove the parking (sic.) as soon as [he] gets access to the domain and place[s] content with a disclaimer that [he is] not associated with Guess?”.
C. Additional Submissions
Respondent’s statements in his informal response are deficient in failing to meet the requirement under Rule 5(c)(i)-(ix) of the Rules. Moreover, they do not rebut Complainants’ prima facie case. Respondent appears to concede that the disputed domain name is identical or confusingly similar and that the PPC use is not a legitimate use of the disputed domain name.
Respondent appears to concede that he is not commonly known by the disputed domain name. He is not making a bona fide offering of goods and has not provided any demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services.
(a) The disputed domain name is confusingly similar to the trade mark GUESS in which Complainants have rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used in bad faith.
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.
Complainants have established they have rights in the GUESS trade mark. The only difference between the disputed domain name and Complainants’ mark lies in the addition of the letters and hyphen “-eo” and the top-level domain “.com”.
The “.com” element is a technical requirement of domain names and does not carry any significance to the issue of whether the disputed domain name is identical or confusingly similar to Complainants’ GUESS trade mark. The Panel also finds that the additional “-eo” element, which is meaningless, is insufficient to differentiate the disputed domain name from Complainants’ GUESS trade mark for the purposes of Policy ¶ 4(a)(i), especially since “the relevant trademark is recognizable within the disputed domain name”. See ¶1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. See, also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016.)
The Panel therefore finds that the disputed domain name is confusingly similar to Complainants’ GUESS mark.
Policy ¶ 4(a)(i) has therefore been established.
Policy ¶ 4(c) provides that a respondent may demonstrate it has rights or legitimate interests in a domain name in dispute by showing any of the following circumstances:
“(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 for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Panel is of the view that a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name has been established by Complainants:
(a) There is no evidence that Respondent is known by the disputed domain name;
(b) Complainant did not license or permit Respondent to use GUESS trade mark in a domain name or as a trade mark;
(c) there is no evidence of Respondent making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers; and
(d) there is no evidence of Respondent’s demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Having established a prima facie case, the burden shifts to Respondent to establish, with supporting evidence, that he has rights or legitimate interests in respect of the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006).
Respondent, however, failed to provide any relevant or credible rebuttal evidence, showing that he rights or legitimate interests in respect of the disputed domain name.
Respondent cannot, as a defense, rely on an excuse that he has no control over the links on the parked domain name. Respondent is responsible for the content appearing on the resolving website. See Park‘N Fly Service Corporation v Kevin Lanzillo, FA 1554365 (Forum May 13, 2014) in which it was held that ultimately, “the Registrant [is] responsible for the content of the material appearing on the webpage associated with the domain name in [a] dispute).
The links on the webpage to which the disputed domain name resolves to include links to the website of Complainants’ competitors. This does not constitute a “legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers”. See Hard Rock Café International (USA), Inc. v. Ryhan Estate Vineyards, FA 35573 (Forum Jan. 14, 2009).
The Panel therefore concludes that Respondent lacks rights and legitimate interests in the disputed domain name.
Policy ¶ 4(a)(ii) has therefore been established.
Policy ¶ 4(b) provides that the following circumstances, if found to be present, “shall be evidence of the registration and the use of a domain name in bad faith:
(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 who 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 or service on your web site or location.”
Respondent did not disclaim any knowledge of Complainants and of their GUESS trade mark, nor did he deny that he had Complainant’s GUESS trade mark in mind when he registered the disputed domain name. The brief response Respondent submitted consisted of five lines, and his statements were unsubstantiated and vague, at best. Respondent provided no credible or clear explanation which would give legitimacy to his registration of the disputed domain name which incorporates the well-known trade mark of Complainants.
Even if Respondent were to direct the disputed domain name to another page “and place content with a disclaimer” of non-association with Guess?, it does not address the fact that the disputed domain name contains the well-known mark of Complainants, and Internet users coming across the disputed domain name would easily be misled into thinking that Respondent’s website is affiliated with and/or sponsored or endorsed by Complainants.
The Panel finds that the use of the disputed domain name to resolve to a page of third-party links that include links to Complainants’ competitors and/or links which relate to fashion accessories (ladies’ bags, watches and purses), which are items the GUESS trade mark is associated with, indicates bad faith registration and use, per Policy ¶ 4(b)(iii) and (iv). In the case of Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015), it was held that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)). In Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015), it was held that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
The registration and use of a domain name that is identical or confusingly similar to a complainant’s well-known mark to host a parking page is evidence of bad faith registration and use. See Williams-Sonoma, Inc. v. Fees, FA937704 (Forum Apr. 25, 2007). See also ¶2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, which states:
“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
…
Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) of phrase and is used to host PPC links genuinely related to the dictionary word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”
Whilst Respondent did not argue that “guess” is an actual dictionary word and by virtue of that, he had a legitimate right to use it in the disputed domain name, the PPC links in this case, as shown in the evidence submitted by Complainants, did not relate to the dictionary word “guess”. The word “guess” but was obviously chosen for its trademark significance, to trade off Complainants’ (and/or Complainants’ competitors) brand names.
For the foregoing reasons and in the absence of any relevant arguments and supporting evidence from Respondent, given the strong reputation that the GUESS trade mark has in the U.S. where Respondent is located, the Panel finds that Respondent registered and has used the disputed domain name in bad faith.
Policy ¶ 4(a)(iii) has therefore been established.
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-eo.com> domain name be TRANSFERRED from Respondent to Complainant Guess? IP Holder L.P.
Francine Siew Ling Tan, Panelist
Dated: January 19, 2019
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