DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited

Claim Number: FA2301002028737

PARTIES

Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainants”), United States of America (“United States”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, United States.  Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guessbogota.com> (the “disputed domain name”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED (the “Registrar”).

 

PANEL

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.

 

Lynda M. Braun as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 23, 2023; Forum received payment on January 23, 2023.

 

On January 28, 2023, the Registrar confirmed by e-mail to Forum that the <guessbogota.com> disputed domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name.  The Registrar 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 January 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2023 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@guessbogota.com.  Also on January 31, 2023, 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 February 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

Preliminary Issue A:  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.”

 

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: “[i]t 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 this case, Guess? IP Holder L.P. is wholly owned by Guess?, Inc., as Guess?, Inc. is the parent company.  Based on the foregoing, the Panel finds that the two Complainants in this case may proceed as one party since they demonstrate a sufficient nexus to each other.

 

Preliminary Issue B:  Language of the Proceeding

The Panel has determined that the language of the proceedings shall be English.

 

“It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.” Eli Lilly and Co. v. John Does 1-100, FA 1692617 (Forum Oct. 13, 2016). Some factors that panels have found persuasive include: “(i) WHOIS information placing Respondent in a country whose identity suggests a familiarity with the English language, and (ii) the filing of a domain name registration which evinces an understanding of the English language.” Hassan Shams v. Private Registration / WhoisGuardService.com, FA 1689685 (Forum Oct. 5, 2016).

 

Here, the disputed domain name features the English word GUESS, suggesting that Respondent is conversant and proficient in the English language. Further under UDRP Rule 11, “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”  Although the Registrar is located in Singapore, an English-language version of the Registration Agreement is provided by the Registrar online.  Moreover, English is an official language of Singapore.  Based on the foregoing, the Panel concludes that the language of the proceeding is English.

 

PARTIES' CONTENTIONS

A.   Complainants

Complainants are leading retailers and manufacturers of apparel. Complainants have rights in the GUESS mark through their registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered on March 17, 1987). Complainants also have rights in the GUESS trademark in other jurisdictions worldwide, including in South America, specifically Colombia, with Bogota as its capital. The foregoing trademarks will hereinafter collectively be referred to as the ”GUESS Mark).

 

The GUESS Mark has acquired valuable goodwill and a prominent reputation, and is widely recognized by the consuming public as a designation of the source of the goods and services of Complainants, in the United States and other jurisdictions worldwide.  Complainants operate over 1,300 stores located in premier retailing locations in major markets worldwide.  Additionally, Complainants have made billions of dollars of sales in connection with the GUESS Mark during the past 40 years.

 

Complainants contend that the disputed domain name is confusingly similar to the GUESS Mark because it incorporates the GUESS Mark in its entirety, adding a geographic term (Bogota), and then adding the “.com” generic Top-Level Domain (“gTLD”). Complainants also claim that Respondent has no legitimate interest in the disputed domain name since the disputed domain name is used to pass off as Complainants and offer counterfeit apparel. Finally, Complainants contend that Respondent registered and is using the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that Complainants have rights in the GUESS Mark based on their trademark registrations in the United States and other jurisdictions worldwide. Registration with the USPTO and other world trademark offices is sufficient to establish rights in a mark pursuant to Policy paragraph 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainants’ GUESS Mark, as it incorporates the GUESS Mark in its entirety, merely adding a geographic term, followed by the “.com“ gTLD. The Panel also finds that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.

 

DISCUSSION

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 disputed domain name should be cancelled or transferred:

 

(1)  the disputed 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 disputed domain name; and

(3)  the disputed 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 Panel finds that Complainants have rights in the GUESS Mark under Policy paragraph 4(a)(i). Complainants assert rights in the GUESS Mark based on their registrations with the USPTO (e.g., Reg. No. 1,433,022, registered on March 17, 19871), as well as with other trademark offices worldwide, including in Colombia, South America, whose capital is Bogota and is part of the disputed domain name.. Registration of a trademark with multiple trademark agencies or offices is generally sufficient in demonstrating rights in a mark under Policy paragraph 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.”).

 

The Panel further finds that Respondent’s disputed domain name is confusingly similar to Complainants’ GUESS Mark as it wholly incorporates the mark in its entirety and adds the geographic term “bogota”, and the gTLD “.com.

The addition of a geographic term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy paragraph 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 disputed domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).

 

Here, the disputed domain name contains the GUESS Mark in its entirety while adding in the term “bogota” and the “.com” gTLD.  Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainants’ GUESS Mark per Policy paragraph 4(a)(i).

 

Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainants.

 

Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.  Under the Policy, Complainants are required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy paragraph 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”).

 

In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond:

 

In support, the Panel finds that Respondent is not commonly known by the disputed domain name, nor have Complainants authorized, licensed or otherwise permitted Respondent to use its GUESS Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy paragraphs 4(c)(i) and (iii), using a disputed domain name and its resolving website to pass off as Complainants and copy parts of Complainants’ websites is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.

 

In addition, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to sell counterfeit GUESS goods on the website to which the disputed domain name resolves.[1]Using a confusingly similar domain name to divert Internet users to a website that sells counterfeit goods featuring the GUESS Mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy paragraphs 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii).”).

 

Here, Complainants provide evidence of the disputed domain name resolving to a webpage displaying Complainants’ GUESS Mark, as well as offering for sale counterfeit versions of Complainants’ goods. Therefore, the Panel finds 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 paragraph 4(c)(i) or (iii). 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).

 

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainants.

 

Registration and Use in Bad Faith

The Panel concludes that, based on the record, Respondent registered and is using the disputed domain name in bad faith.

 

First, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s resolving website by creating a likelihood of confusion with Complainants’ GUESS Mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy paragraph 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy paragraph 4(b)(iv)).

 

Second, the fame of the GUESS Mark, which was used and registered by Complainants far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainants’ rights in the GUESS Mark, and this constitutes bad faith under Policy  paragraph 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainants or their GUESS Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademark before registering a confusingly similar domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).

 

Third, Respondent attempts to pass off as Complainants, which is indicative of bad faith under Policy paragraph 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy paragraph 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.”).

 

Moreover, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent uses the disputed domain name to resolve to a website that sells counterfeit goods, purportedly those of the Complainants.  Using a confusingly similar domain name to divert Internet users to a website that sells counterfeit goods is emblematic of bad faith.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainants.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <guessbogota.com> disputed domain name be TRANSFERRED from Respondent to Complainants.

 

Lynda M. Braun, Panelist

Dated:  March 3, 2023