Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2208002008840
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 Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guess-uruguay.com>, <guesshrvatska.com>, <guessspletnatrgovina.com>, <guessisrael.com>, <guessuruguay.com>, <guesshrvatskahr.com>, and <guessslovenija.com>, registered with Alibaba.Com Singapore E-Commerce Private Limited.
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 August 17, 2022; the Forum received payment on August 17, 2022.
On August 19, 2022, Alibaba.Com Singapore E-Commerce Private Limited confirmed by email to the Forum that the <guess-uruguay.com>, <guesshrvatska.com>, <guessspletnatrgovina.com>, <guessisrael.com>, <guessuruguay.com>, <guesshrvatskahr.com>, and <guessslovenija.com> domain names are registered with Alibaba.Com Singapore E-Commerce Private Limited and that Respondent is the current registrant of the names. Alibaba.Com Singapore E-Commerce Private Limited has verified that Respondent is bound by the Alibaba.Com Singapore E-Commerce Private Limited 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 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2022 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@guess-uruguay.com, postmaster@guesshrvatska.com, postmaster@guessspletnatrgovina.com, postmaster@guessisrael.com, postmaster@guessuruguay.com, postmaster@guesshrvatskahr.com, postmaster@guessslovenija.com. Also on August 22, 2022, 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 September 21, 2022, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a retailer and its wholly owned intellectual property holding company subsidiary. Complainant has marketed and licensed apparel and other products under the GUESS mark since 1981, accumulating billions of dollars of sales. Complainant owns numerous trademark registrations for GUESS and related marks, including registrations for GUESS in standard character form in the United States, the European Union, and other jurisdictions throughout the world. Complainant also asserts common law rights in the mark, and claims that it is among the most famous and distinctive marks in retailing.
Respondent is the registrant of the disputed domain names <guesshrvatska.com>, <guessisrael.com>, <guessuruguay.com>, and <guessslovenija.com>, registered in April 2022; and <guess-uruguay.com>, <guessspletnatrgovina.com>, and <guesshrvatskahr.com>, registered in July 2022.
Four of the domain names, <guesshrvatskahr.com>, <guessisrael.com>, <guess-uruguay.com>, <guessspletnatrgovina.com>, are being used for nearly identical websites that prominently display Complainant's GUESS mark with images depicting what appear to be Complainant's products. Complainant alleges that the websites are designed to mimic Complainant's own website; that they include unauthorized copies of Complainant's own copyright-protected images; and that the products offered for sale on Respondent's websites are counterfeit versions of Complainant's products. The other three disputed domain names do not resolve to websites. Complainant states that Respondent is not commonly known by the disputed domain names, is not an authorized vendor or licensee of Complainant, and is not authorized to use Complainant's GUESS mark.
Complainant contends on the above grounds that each of the disputed domain names <guess-uruguay.com>, <guesshrvatska.com>, <guessspletnatrgovina.com>, <guessisrael.com>, <guessuruguay.com>, <guesshrvatskahr.com>, and <guessslovenija.com> is confusingly similar to its GUESS mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names incorporates Complainant's registered GUESS trademark, adding in each instance a hyphen, a geographic name ("Uruguay," "Hrvatska" (Croatia), "Israel," or "Slovenija" (Slovenia)), a geographic abbreviation ("HR," for Croatia), a generic term ("spletna trgovina," Slovenian for "online shop"), or some combination thereof, and appending the ".com" top-level domain. Such additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Web Commerce Communications Ltd. / Client Care, FA 2006831 (Forum Aug. 30, 2022) (finding <guess-southafrica.com>, <guessaustraliaau.com>, <guessmalaysia.com>, <guessirelandonline.com> and <guess-philippines.com> confusingly similar to GUESS); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2001502 (Forum July 26, 2022) (finding <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> confusingly similar to GUESS); Guess? IP Holder L.P. & Guess?, Inc. v. Phillipp Muench, FA 2000574 (Forum July 12, 2022) (finding <guess-hrvatska.com> confusingly similar to GUESS); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 1998635 (Forum July 5, 2022) (finding <guess-portugal.com> confusingly similar to GUESS). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, 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).
Each of the disputed domain names incorporates Complainant's registered mark without authorization, and their sole apparent use is for websites that pass off as Complainant and offer for sale unauthorized and allegedly counterfeit versions of Complainant's products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Web Commerce Communications Ltd. / Client Care, FA 2006831, supra (finding lack of rights or interests in similar circumstances); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2001502, supra (same); Guess? IP Holder L.P. & Guess?, Inc. v. Phillipp Muench, FA 2000574, supra (same); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 1998635, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, 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 names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a 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 seven domain names that combine Complainant's famous mark with geographic or generic terms, and is using at least four of them for websites that pass off as Complainant and offer for sale unauthorized and likely counterfeit versions of Complainant's products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Web Commerce Communications Ltd. / Client Care, FA 2006831, supra (finding bad faith registration and use in similar circumstances); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2001502, supra (same); Guess? IP Holder L.P. & Guess?, Inc. v. Phillipp Muench, FA 2000574, supra (same); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 1998635, supra (same). The Panel finds that the disputed domain names were registered and are being used 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 <guess-uruguay.com>, <guesshrvatska.com>, <guessspletnatrgovina.com>, <guessisrael.com>, <guessuruguay.com>, <guesshrvatskahr.com>, and <guessslovenija.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 22, 2022
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