Guess? IP Holder L.P. and Guess?, Inc. v. ICS INC
Claim Number: FA1905001845203
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 ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessincretailijobs.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2019; the Forum received payment on May 28, 2019.
On May 29, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guessincretailijobs.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 June 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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@guessincretailijobs.com. Also on June 3, 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 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 27, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
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.” Guess? IP Holder LP is wholly owned by Guess? Inc. and holds trade mark registrations on behalf of the latter. The panel holds that both companies have the sufficient nexus to both bring this Complaint.
A. Complainant
The Complainants own the mark GUESS registered, inter alia, in the USA for clothing with first use recorded as 1981.
Guess? IP Holder LP is wholly owned by Guess? Inc. and holds trade mark registrations on behalf of the latter. Both companies have a sufficient interest to both bring this Complaint.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s trade mark incorporating it in its entirety and adding only the generic terms ‘inc’, ‘retail’, ‘i’ and ‘jobs’ and the gTLD .com which does not prevent such confusing similarity.
The Respondent does not have rights or a legitimate interests in the Domain Name is not commonly known by it and is not authorized by the Complainant. The Domain Name has been used for pay per click links which is not bona fide offering of goods and services or noncommercial legitimate or fair use. This is registration and use in bad faith under Policy 4 (b)(iv). Further the Respondent is the subject of a large number of adverse decisions against it under the Policy showing a pattern of activity under Policy 4 (b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainants own the mark GUESS registered, inter alia, in the USA for clothing with first use recorded as 1981.
The Domain Name registered in 2019 has been used for pay per click links.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines the Complainants’ GUESS mark (registered, inter alia, in the USA with first use recorded as 1981), the generic terms ‘inc’, ‘retail’, ‘i’ meaning Internet, ‘jobs’ and the gTLD .com.
The addition of generic terms which are commonly related to business do not serve to distinguish the Domain Name from the Complainants’ GUESS mark which is still identifiable within the Domain Name. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top level domain, the differences between the domain name and the mark it contains are insufficient to differentiate one from the other for the purposes of the Policy).
The gTLD .com does not serve to distinguish the Domain Name from the Complainants’ GUESS mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a domain name is irrelevant to a Policy 4(a)(i) analysis).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainants have rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainants have not authorized the use of their mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sep. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site to which the Domain Name redirects offers links to third party businesses in competition with those of the Complainants. It is commercial so cannot be a legitimate noncommercial fair use. It does not make it clear that there is no commercial connection with the Complainants. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See McGuireWoods LLP v. Mykhailo Loginov/Loginov Enterprises doo, FA1412001584837 (Forum Jan 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with the Complainant .. is not a bona fide offering of goods or services pursuant to 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainants have satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing a sign identical to the Complainants’ mark. While ‘guess’ is a dictionary word the Respondent has not made any contentions that any such generic use is intended. The use of the additional term ‘inc’ appears to refer to Guess Inc. In this context the Panel holds that it is more likely than not that the Complainants’ business is being targeted by the registration of the Domain Name.
In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe the links on it are connected to or approved by the Complainants as they offer third party services under the Complainants’ mark. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the web site or services on it likely to disrupt the business of the Complainants. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) and Capital One Financial Corp DN Manager/Whois-Privacy.net Ltd, FA1504001615034 (Forum June 4, 2015).
As such, the Panel holds that the Complainants have made out their case that the Domain Name was registered and used in bad faith and have satisfied the third limb of the Policy. There is no need to consider further allegations of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessincretailijobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 27, 2019
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