Guess? IP Holder L.P. and Guess?, Inc. v. ji zhou chen
Claim Number: FA1908001855974
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 ji zhou chen (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessoutletstoreuk.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 August 6, 2019; the Forum received payment on August 6, 2019.
On August 6, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guessoutletstoreuk.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 August 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@guessoutletstoreuk.com. Also on August 9, 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 September 3, 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 both holds trademark registrations including the GUESS mark. The Panel holds that both companies have the sufficient nexus to both bring this Complaint.
A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant owns the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered in the USA for clothing. It owns guess.com. Guess IP Holder LP is effectively wholly owned by Guess Inc. and both own GUESS trade mark registrations. Both have a sufficient trade mark interest and ownership in the Domain Name.
The Domain Name is confusingly similar to Complainant’s GUESS mark merely adding the descriptive terms ‘outlet’, ‘store’ and ‘uk’ which do not distinguish the Domain Name from the Complainant’s mark.
The addition of the gTLD “.com” is irrelevant to the confusing similarity analysis.
Respondent has no rights or legitimate interest in the Domain Name. Respondent is not commonly known by the Domain Name. The Complainant has not licensed the Respondent to use the Complainant’s mark. The use is commercial so this cannot be legitimate noncommercial or fair use of the Domain Name.
The Domain Name is being used to sell counterfeit goods competing with the Complainant , which is not a bona fide offering of goods or services.
The Domain Name has been registered and used in bad faith. The Respondent has no connection with the Complainant the trademark owner. Use of a domain name confusingly similar to a Complainant’s mark to redirect an Internet user to a web site which offers goods in direct competition to the Complainant’s goods satisfies 4(b)(iv) and 4(b)(iii) of the Policy.
The Respondent’s site prominently displays the Complainant’s GUESS mark and includes copyright protected photographs owned by the Complainant showing actual knowledge of the Complainant and its business.
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 2017 has been used to offer clothing which competes with the Complainant. The Complainant’s trademark is used prominently on the web site attached to the Domain Name as are photographs taken from the Complainant’s web site suggesting the site is official.
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 Complainant’s GUESS mark (registered, inter alia, in the USA with first use recorded as 1981), the generic terms ‘outlet’, ‘store’ and the ‘uk’ and the gTLD “.com.”
Generic terms such as ‘outlet’, ‘store’ and the ‘uk’ 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).
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 Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its 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 Sept. 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).
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services if it uses the name to divert Internet users to a web site competing with the complainant under the complainant’s mark and offering counterfeit goods. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). It is clear from the evidence that the Respondent has used the site attached to the Domain Name for a competing retail site to sell clothing, which is not connected with the Complainant and presenting them as the goods of the Complainant when they are not.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trademarks in this way. As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent's use of the site attached to the Domain Name is commercial and it is using the site to make profit from competing products not associated with the Complainant in a confusing manner presenting them as the goods of the Complainant and thereby disrupting the Complainant’s business. See H-D USA LLC v. Janis Vecvanags, FA 1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit Harley Davidson goods disrupted the Complainant’s business and indicated bad faith under Policy 4(b)(iii).)
The prominent use of the Complainant’s GUESS mark on the Respondent’s site in a form highly similar to the font used by the Complainant to present its brand is passing off. The usage of the Complainant’s GUESS mark in relation to competing products not connected with the Complainant in a font highly similar to the Complainant’s way of presenting its brand name on the website attached to the Domain Name is a misrepresentation and because of the use of this highly similar font and the Complainant’s GUESS mark in the Domain Name and on the site attached to the Domain Name, together with photographs taken from the Complainant’s web site, the Respondent’s site is highly likely to be confused for a site belonging to or connected with the Complainant and offering the Complainant’s products when it is offering goods of a third party manufacture instead. This is creating a likelihood of confusion as to the source of the products on the Respondent’s web site and is bad faith registration and use under Policy 4 (b)(iv). See H-D Michigan, LLC v. Roos, FA 1250712 (Forum Apr. 23, 2009)(deterring that the respondent’s selling of counterfeit goods creates a likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the Respondent to profit from that confusion.)
The use of the Complainant’s brand in a highly similar font to that use by the Complainant on the web site attached to the Domain Name and photographs belonging to the Complainant indicates the Respondent had actual knowledge of the Complainant and its rights at the time of registration and throughout use.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the web site under ¶ 4(b)(iv) of the Policy. This is also clearly designed to disrupt the business of a competitor and constitutes bad faith under ¶ 4(b)(iii) of the Policy.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under ¶¶ 4(b)(iii) and (iv) and has 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 <guessoutletstoreuk.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 3, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page