Guess? IP Holder L.P. and Guess?, Inc. v. Florence E / Guess Community Services
Claim Number: FA1902001828918
Complainant is Guess? IP Holder L.P. and Guess?, Inc. ("Complainant"),[i] represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Florence E / Guess Community Services ("Respondent"), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guesscommunityservices.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2019; the Forum received payment on February 7, 2019.
On February 8, 2019, GoDaddy.com, LLC confirmed by email to the Forum that the <guesscommunityservices.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 February 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@guesscommunityservices.com. Also on February 13, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 March 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is an international retailer of clothing and accessories. Complainant has used the GUESS mark in connection with apparel and other products since 1981, and claims it has become one of the most famous and distinctive marks in retailing, with billions of dollars in sales. Complainant owns numerous trademark registrations for GUESS in the United States and other jurisdictions worldwide. Complainant also engages in charitable services through its GUESS Foundation.
Respondent registered the disputed domain name <guesscommunityservices.com> via a privacy registration service in January 2018. The domain name resolves to a registrar-provided parking page. Complainant states that it has not given Respondent permission to use the GUESS mark and asserts that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <guesscommunityservices.com> is confusingly similar to its GUESS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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.
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 Management, 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); 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.").
The disputed domain name <guesscommunityservices.com> incorporates Complainant's registered GUESS trademark, adding the generic terms "community" and "services" (terms that relate to Complainant’s charitable activities) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Jerry D. Guess / WEB MASTER GUESS & CO. CORPORATION / CORPORATE AFFAIRS / THE GUESS CORPORATION, FA 1794408 (Forum Aug. 7, 2018) (finding <guesscompanies.com>, <guessandcocorpfoundation.org>, and other domain names confusingly similar to GUESS). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's famous mark without authorization, and Respondent does not appear to have made any active use of the domain name.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's famous mark, using a privacy registration service to shield his or her identity. More than a year has passed since that time, and Respondent does not appear to have made any active use of the domain name. In the absence of any explanation from Respondent, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's well-known mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. See, e.g., Enterprise Holdings, Inc. v. Stephanie Wynter, FA 1780232 (Forum Apr. 30, 2018) (finding bad faith registration and use in similar circumstances); see also Guess? IP Holder L.P. & Guess?, Inc. v. Louis Klarevas / Web Development LLC, FA 1739474 (Forum Aug. 24, 2017) (reciting factors listed in WIPO Overview relevant to inference of bad faith from passive holding of a domain name). The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guesscommunityservices.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 7, 2019
[i] Guess? IP Holder L.P. is owned via intermediaries by Guess?, Inc., and the two entities represent that their trademark activities are coordinated and managed together. The Panel considers this connection sufficient under the Forum's Supplemental Rule 1(e) to warrant treating them as a single entity for purposes of this proceeding. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. New Ventures Services, Corp, FA 1825019 (Forum Feb. 10, 2019); Guess? IP Holder L.P. & Guess?, Inc. v. Louis Klarevas / Web Development LLC, FA 1739474 (Forum Aug. 24, 2017).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page