Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2209002010825
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 <guessdubaimall.com> ,<guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.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 September 2, 2022; Forum received payment on September 2, 2022.
On September 06, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <guessdubaimall.com> ,<guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names is 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 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@guessdubaimall.com, postmaster@guessuaeonline.com, postmaster@guessph.com, postmaster@guessphilippines.com, postmaster@guessmalaysiaonline.com, postmaster@guess-deutschland.com. Also on September 9, 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 9, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant offers men’s and women’s apparel and related goods. Complainant has rights in the GUESS trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433, 022 registered March 17, 1987). Respondent’s <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names are virtually identical and confusingly similar to Complainant’s trademark because they incorporate the GUESS trademark in its entirety and add a geographic term, a generic term, and add the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the GUESS trademark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names are used to pass off as Complainant.
Respondent registered and uses the <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names in bad faith., Respondent registered the disputed domain names in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain names with actual 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, Malaysia, United Arab Emirates, Philippines, Germany. Some examples are:
- US National Trademark No. 1,704,002 GUESS (word), registered on July 28, 1992 for goods in Intl Classes 3 and 9;
- US National Trademark No. 2,077,475 GUESS (word), registered on July 8, 1997 for goods in Intl Class 14;
- US National Trademark No. 2,308,468 GUESS? (fig), registered on Jan 18, 2000 for goods and services in Intl Classes 9, 14, 16, 18, 25, 26 and 35;
- US National Trademark No. 2,370,424 GUESS (word), registered on July 25, 2000 for services in Intl Class 35;
- US National Trademark No. 1,978,398 GUESS? (fig), registered on June 4, 1996 for goods in Intl Class 14;
- US National Trademark No. 1,271,896 GUESS? (fig), registered on March 27, 1984 for goods in Intl Class 25;
- 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. 1,435,363 GUESS? (fig), registered on April 7, 1987 for goods in Intl Classes 9, 14, 16, 18, 20, 21 and 24;
- US National Trademark No. 1,458,438 GUESS (fig), registered on September 22, 1987 for goods in Intl Class 25;
- US National Trademark No. 1,546,993 GUESS (fig), registered on July 11, 1989 for goods in Intl Class 3;
- Malaysian National Trademark No. 86000960 GUESS? (word), registered on March 10, 1986 for goods in Intl Class 25;
- Malaysian National Trademark No. 86001976 GUESS? (fig), registered on May 21, 1986 for goods in Intl Class 22;
- Malaysian National Trademark No. 86000800 GUESS? (fig), registered on February 28, 1986 for goods in Intl Class 24;
- United Arab Emirates Trademark No. 86793 GUESS (word), registered on March 5, 2008 for services in Intl Class 35;
- United Arab Emirates Trademark No. 86792 GUESS (word), registered on March 5, 2008 for goods in Intl Class 18;
- United Arab Emirates Trademark No. 86791 GUESS (word), registered on March 5, 2008 for goods in Intl Class 9;
- United Arab Emirates Trademark No. 86790 GUESS (word), registered on March 5, 2008 for goods in Intl Class 3;
- United Arab Emirates Trademark No. 15766 GUESS (word), registered on June 9, 1998 for goods in Intl Class 25;
- Philippine National Trademark No. 5755 GUESS (word), registered on April 9, 2007 for goods in Intl Class 3;
- Philippine National Trademark No. 53737 GUESS? (fig), registered on October 13, 1992 for goods in Intl Classes 9, 14, 16, 18, 20, 21, 24, 26, 28;
- German National Trademark No. 2043693 GUESS (word), registered on August 4, 1992 for goods in Intl Class 25;
- German National Trademark No. 1055695 GUESS? (fig), registered on November 7, 1983 for goods in Intl Class 25;
- German National Trademark No. 1191137 GUESS? (fig), registered on January 31, 1995 for goods in Intl Class 25.
The disputed domain names <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> were registered on May 27, 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 argues that Respondent’s <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names are identical or confusingly similar to Complainant’s GUESS trademark as they contain the GUESS trademark in its entirety and merely add a geographic term, a generic term, and the “.com” gTLD. The addition of a geographic phrase, a generic term, and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”); see also 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 and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel find that the disputed domain names are confusingly similar to Complainant’s trademark per 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 contends that Respondent lacks rights or legitimate interests in the <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names since Respondent is not commonly known by any of the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the GUESS trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the trademark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). 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 Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Client Care,” and there is no other evidence to suggest that Respondent was authorized to use the GUESS mark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names to pass themselves off as the Complainant. Where the respondent uses a disputed domain name to pass themselves off as a complainant, previous panels have found that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of the disputed domains’ resolving pages offering counterfeit goods and making use of Complainant’s copyrighted images. The Panel agrees with Complainant’s conclusion, and find that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where the respondent uses a disputed domain name to pass themselves off as a complainant, it is a clear evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) As previously noted, Complainant provides screenshots of the disputed domain’s resolving page offering counterfeit goods and making use of Complainant’s copyrighted images. The Panel therefore find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the GUESS trademark at the time of registering the <guessdubaimall.com>, <guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names. While past panels have previously found that constructive notice is not sufficient for a finding of bad faith under Policy ¶ 4(a)(iii), actual notice may be found based on the fame and notoriety of a mark. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also 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"). As noted above, Complainant provides evidence of the longstanding use of the GUESS trademark, in combination of the fact that Respondent has registered several domain names incorporating the Complainant’s trademark. Therefore, the Panel finds it most likely that Respondent had actual notice of Complainants’ rights in the GUESS trademark, and thereby 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 <guessdubaimall.com> ,<guessuaeonline.com>, <guessph.com>, <guessphilippines.com>, <guessmalaysiaonline.com>, and <guess-deutschland.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 20, 2022
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