Guess? IP Holder L.P. and Guess?, Inc. v. Premium Domain Seller
Claim Number: FA2204001992782
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 Premium Domain Seller (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gbyguess.xyz>, registered with Sav.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2022; the Forum received payment on April 18, 2022.
On April 19, 2022, Sav.com, LLC confirmed by e-mail to the Forum that the <gbyguess.xyz> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 April 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2022 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@gbyguess.xyz. Also on April 21, 2022, 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 May 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it operates in the retail apparel industry. Complainant started in 1981 as a small California jeans company. Notwithstanding its humble beginnings, it has developed into a global lifestyle brand. While jeans remain the foundation of the company’s history and success, Complainant designs, markets, and distributes its full collections of women’s and men’s apparel throughout the United States, Canada, and worldwide. In the early 1980’s, Complainant quickly infiltrated popular culture and became an icon of the generation. Complainant created groundbreaking advertising campaigns featuring sexy, sultry models previously unknown in the industry, and turned them into superstars overnight. Models such as Claudia Schiffer, Carrè Otis, Eva Herzigova, Laetitia Casta, Carla Bruni, and Naomi Campbell launched their careers in the Complainant’s original campaigns. With striking images and fresh new products, Complainant gained momentum and nationwide recognition. In the 1980’s its product line expanded beyond men’s and women’s jeans to include baby apparel, watches, footwear, eyewear, and perfume. The 1990’s saw rapid expansion, bringing Complainant to Europe, Asia, South America, Africa, Australia, and the Middle East. In the mid-1990’s, Complainant became a public company and launched its first website at the domain name <guess.com>. In 1995, Complainant expanded its retailing business by launching an e-commerce website at <guess.com>. Today, Complainant is a two billion dollar multinational retailer. It sells clothing and accessories to enhance the casual lifestyle of people with a flair for individualism. In 2012, it celebrated 30 years in the fashion industry. Complainant has rights in the G BY GUESS mark through its registration in the United States in 2002.
Complainant alleges that the disputed domain name is identical or confusingly similar to its G BY GUESS mark as it incorporates the mark in its entirety and merely adds the “.xyz” generic top-level domain name (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its G BY GUESS mark in any way. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead offers the disputed domain name for sale for a price in excess of out-of-pocket costs.
Respondent registered and uses the disputed domain name in bad faith because it offers it for sale for a price in excess of out-of-pocket costs. Respondent registered the domain name in opportunistic bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the G BY GUESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark G BY GUESS dating back to 2002 and uses it to market apparel.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent offers the disputed domain name for sale for a price in excess of out-of-pocket costs.
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”).
The disputed domain name incorporates Complainant’s G BY GUESS mark in its entirety and merely adds the “.xyz” gTLD. Under Policy ¶ 4(a)(i), adding the “.xyz” gTLD is insufficient in differentiating a disputed domain name from the mark. See Kellog North America Company v. Private Registration, FA 1613347 (Forum June 2, 2015) (finding that the <kelloggs.xyz> domain name is identical to the complainant’s KELLOGG’S mark under Policy ¶ 4(a)(i)). Therefore if the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its G BY GUESS mark in any way. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), where a response it lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS record identifies the registrant as “Premium Domain Seller YUHUAYUAN, BEIJINGDONGLU, HUAIYINQU”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent offers the disputed domain name for sale for a price in excess of out-of-pocket costs. Under Policy ¶ 4(a)(ii), a respondent lacks rights and legitimate interests in the disputed domain name where offers the domain name for sale. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Thus, the Panel finds that Respondent fails to use the disputed domain to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent offers the disputed domain name for sale for a price in excess of out-of-pocket costs. Under Policy ¶ 4(b)(i), there is generally a finding of bad faith registration and use where the respondent uses the resolving webpage to offer the domain name for sale. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”); see also Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gbyguess.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 18, 2022
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