Guess? IP Holder L.P. and Guess?, Inc. v. Abdulla Hasanov
Claim Number: FA1905001845218
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 Abdulla Hasanov (“Respondent”), Azerbaijan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-apps.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 <guess-apps.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 May 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 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@guess-apps.com. Also on May 30, 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 21, 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.
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 a hyphen, the generic term ‘apps’ 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 not been used so there has been no bona fide offering of goods and services and no noncommercial legitimate or fair use.
Passive holding can be registration and use in bad faith. The Domain Name is obviously connected with a particular trade mark owner and registration by someone with no connection to the trade mark owner supports a finding of bad faith under 4 (b)(iii) of the Policy.
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 not been used.
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”).
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.
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), a hyphen, the generic term ‘apps’ and the gTLD .com.
Punctuation marks such as hyphens and generic terms which are commonly related to the on line retail business and services such as ‘apps’ do not serve to distinguish the Domain Name from the Complainant’s 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 an 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); see also Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).).
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).
There has been no use of the disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i).).
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 ‘apps’ suggests a sales or service channel for a business known by the term GUESS and the Complainants’ business is extremely well known by this name for clothing. 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.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
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.
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-apps.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 22, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page