Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2208002010206
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on August 29, 2022; Forum received payment on August 29, 2022.
On Sep 01, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.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 September 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@guesssk.com, postmaster@guessportugal.com, postmaster@guessonlineportugal.com, postmaster@guess-slovensko.com. Also on September 6, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainants requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The Panel notes that the Complainants requests that the language of this administrative proceeding shall proceed in the English language pursuant to UDRP Rule 11(a). The Complainants make this request in light of the fact that the Registrar is located in Singapore. However, as also noted by the Complainants, an English-language version of the Registration Agreement is provided by the Registrar online, and English is one of the official languages in Singapore.
Considering the above facts, the Panel decides that the proceeding should be in English.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants: Guess? IP Holder L.P. and Guess?, Inc. 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.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated: “It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity”.
In the present case, the Complainants has provided a Declaration explaining the corporate structure and specific relationship between the Complainants, namely that Guess? IP Holder L.P. is a Delaware limited partnership that is effectively wholly owned by Guess?, Inc.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Panel will therefore treat them together as a single entity in this proceeding. The Complainants will hereafter be collectively referred to as “Complainant”, except where otherwise specifically identified.
A. Complainant
The Complainant is a clothing and apparel company. Complainant has rights in the GUESS trademark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered on March 17, 1987). Respondent’s <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names are identical or confusingly similar to Complainant’s GUESS trademark as they incorporate the trademark in its entirety while adding the geographic terms “portugal”, “slovensko”, which means Slovakia, and “sk”, which is the country abbreviation for Slovakia. Additionally, the <guessonlineportugal.com> domain name adds the generic term “online”, and all of the domain names add the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its GUESS trademark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead directs users to its website where it uses Complainant’s images and sells counterfeit items of Complainant’s. Furthermore, Respondent capitalizes on consumer recognition of Complainant’s trademark for commercial gain.
Respondent registered and uses the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names in bad faith. Respondent disrupts Complainant’s business by offering counterfeit items for sale in competition with Complainant. Additionally, Respondent diverts users for commercial gain while causing initial interest confusion and engaging in opportunistic bad faith. Furthermore, Respondent used a privacy service to hide its identity. Finally, Respondent registered the disputed domain names with at least constructive knowledge of Complainant’s rights in the GUESS trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant, Guess?, Inc., is the owner a number of national trademark registrations for GUESS and related trademarks in several countries, including but not limited to USA, Portugal, Slovakia. Some examples are:
- Portuguese National Trademark No. 235023 GUESS? (word), registered on August 1, 1991 for goods in Intl Class 25;
- Portuguese National Trademark No. 235016 GUESS? (word), registered on December 6, 1991 for goods in Intl Class 14;
- Portuguese National Trademark No. 235015 GUESS? (word), registered on December 6, 1991 for goods in Intl Class 9;
- Portuguese National Trademark No. 235012 GUESS? (word), registered on December 6, 1991 for goods in Intl Class 3;
- Portuguese National Trademark No. 224114 GUESS? (word), registered on March 14, 1989 for services in Intl Class 26;
- Portuguese National Trademark No. 235025 GUESS? (word), registered on December 6, 1991 for services in Intl Class 35;
- Portuguese National Trademark No. 235018 GUESS? (word), registered on December 6, 1991 for goods in Intl Class 18;
- Portuguese National Trademark No. 235056 GUESS? (word), registered on December 5, 1991 for goods in Intl Class 14;
- US National Trademark No. 1,299,580 GUESS? (fig), registered on October 9, 1984 for goods in Intl Classes 24 and 25;
- US National Trademark No. 1,427,405 GUESS? (word), registered on February 3, 1987 for goods in Intl Class 14;
- US National Trademark No. 1,433,022 GUESS (word), registered on March 17, 1987 for goods in Intl Class 25;
- US National Trademark No. 2,370,424 GUESS (word), registered on July 25, 2000 for services in Intl Class 35;
- Slovakian National Trademark No. 166710 GUESS? (word), registered on October 10, 1987 for goods in Intl Class 25;
- Slovakian National Trademark No. 175344 GUESS (word), registered on August 1, 1995 for goods in Intl Class 3
The disputed domain names <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> were registered on May 30, 2022.
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 Complainant claims rights in the GUESS trademark through its registration with multiple trademark agencies, including the USPTO (e.g., Reg. No. 1,433,022, registered on March 17, 1987). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Since Complainant registered its mark with multiple trademark agencies, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names are identical or confusingly similar to Complainant’s GUESS trademark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the trademark it incorporates where it adds a geographic term. See Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).). Additionally, adding a generic term and a “.com” gTLD is insufficient in differentiating from the trademark. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The disputed domain names all incorporate the trademark in its entirety while adding the geographic terms “portugal”, “slovensko”, which means Slovakia, and “sk”, which is the country abbreviation for Slovakia. Additionally, the <guessonlineportugal.com> domain name adds the generic term “online”, and all of the domain names add the “.com” gTLD. Therefore, the Panel find that Respondent’s domain names are at least confusingly similar to Complainant’s GUESS trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent is not commonly known by the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names. Under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a respondent is not commonly known by the disputed domain name/s. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 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 information identifies Respondent as “Client Care / Web Commerce Communications Limited.” Therefore, the Panel find that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use by diverting users to Respondent’s website which uses Complainant’s images to sell counterfeit items of Complainants. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to sell counterfeit items while attempting to mimic a complainant’s website is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”). Additionally, Respondent capitalizes on the goodwill associated with Complainant’s trademark for commercial gain, which is not a bona fide offering of goods or legitimate noncommercial or fair use. See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the respondent’s use of the <thechipmerchant.net>, <chipmerchant.com>, and <chipmerchant.net> domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and implied that the respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods). Complainant provides screenshots of the disputed domain names’ resolving websites, which offer counterfeit items of Complainant’s for sale while displaying Complainant’s copyrighted images. The Panel therefore find that Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues Respondent registered and uses the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names in bad faith by disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), using a disputed domain name to offer counterfeit items for sale in competition with complainant is evidence of bad faith registration and use. See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA1410001587466 (Forum Dec. 13, 2014) (“The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).”). As noted above, Complainant has provided screenshots of the disputed domain names’ resolving websites, which obviously offer counterfeit items for sale while displaying Complainant’s images. Thus, the Panel find that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant contends that Respondent registered and uses the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names in bad faith by diverting users to its website for commercial gain while creating a likelihood of confusion among users. Under Policy ¶ 4(b)(iv), using a disputed domain name to divert users for a respondent’s commercial gain and to create user confusion is evidence of bad faith registration and use. See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). As noted, the disputed domain names’ resolving websites display Complainant’s images and counterfeit items, and the Panel therefore clearly find that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant contends that Respondent registered and uses the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names in bad faith by causing initial interest confusion and engaging in opportunistic bad faith. Under Policy ¶ 4(a)(iii), initial interest confusion and opportunistic bad faith may be demonstrated where a disputed domain name is obviously connected to a well-known mark, and is thus evidence of bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). As shown above, Complainant’s well-known GUESS trademark is incorporated into the disputed domain names. The Panel therefore find that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Furthermore, Complainant contends that Respondent’s bad faith is further demonstrated by its use of a privacy service to hide its identity. Under Policy ¶ 4(a)(iii), use of a privacy service to hide one’s identity may contribute to a finding of bad faith registration and use. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). In the present case, Respondent’s identity was initially hidden by a privacy service. The Panel find that Respondent’s use of a privacy service contributes to a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent registered the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names with at least constructive knowledge of Complainant’s rights in the GUESS trademark. While past panels have previously found that constructive notice is not sufficient for a finding of bad faith under Policy ¶ 4(a)(iii), actual knowledge may be found based on the fame and notoriety of a trademark. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Although Complainant does not argue that Respondent had actual knowledge of Complainant’s rights in the trademark/s, Complainant provides evidence of the longstanding use of the GUESS trademark. Based on the evidence provided by the Complainant, as well as the number of domain names built on the Complainant’s trademark that the Respondent has registered, the Panel agrees that actual knowledge was present in this instance, and find bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guesssk.com>, <guessportugal.com>, <guessonlineportugal.com>, and <guess-slovensko.com> domain names be TRANSFERRED from Respondent to Complainant, Guess?, Inc.
Petter Rindforth, Panelist
Dated: October 19, 2022
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