Guess? IP Holder L.P. and Guess?, Inc. v. Web Commerce Communications Limited / Client Care
Claim Number: FA2304002042274
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 Web Commerce Communications Limited / Client Care (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guessverige.com>, <guessuomi.com>, and <guessoutletchile.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 April 28, 2023; Forum received payment on April 28, 2023.
On May 4, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <guessverige.com>, <guessuomi.com>, and <guessoutletchile.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 May 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@guessverige.com, postmaster@guessuomi.com, postmaster@guessoutletchile.com. Also on May 5, 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 May 30, 2023, 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 name be transferred from Respondent to Complainant.
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 leading retailer and manufacturer of apparel. 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 <guessverige.com>, <guessuomi.com>, and <guessoutletchile.com> domain names (henceforth referred to as the “disputed domain names”) are virtually identical and confusingly similar to Complainant’s trademark because each one incorporates the GUESS trademark in its entirety and adds a geographic or generic term and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names 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 resolve to webpages that displays Complainant’s trademark and photos, offering for sale counterfeit versions of Complainant’s goods.
Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain names in order to disrupt Complainant’s business and divert customers for commercial gain. Respondent makes use of a privacy shield. 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, Sweden and Finland. 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;
- Swedish National Trademark No. 249831 GUESS (word), registered on June 18, 1993 for goods in Intl Class 3;
- Swedish National Trademark No. 209999 GUESS (word), registered on April 15, 1988 for goods and services in Intl Classes 9, 14, 18 and 35;
- Finnish National Trademark No. 95941 GUESS? (fig), registered on September 4, 1986 for goods in Intl Class 25;
- Finnish National Trademark No. 120907 GUESS (word), registered on August 4, 1992 for goods in Intl Class 3; and
- Finnish National Trademark No. 141936 GUESS (word), registered on December 19, 1995 for goods in Intl Class 14.
The disputed domain name <guessverige.com> was registered on September 5, 2022; the disputed domain name <guessuomi.com> was registered on January 9, 2023; and the disputed domain name <guessoutletchile.com> was registered on December 8, 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 Respondent’s disputed domain names are identical or confusingly similar to Complainant’s GUESS trademark. The addition of a gTLD and a geographic or generic term fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Here, each disputed domain name contains the GUESS trademark in its entirety while adding in a geographic or generic term and the “.com” gTLD. Therefore, the Panel find 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 disputed domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the GUESS mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant’s trademark may also indicate that a respondent is not commonly known by a 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).”). The WHOIS information for the disputed Domain Names lists the registrant as “Web Commerce Communications Limited / Client Care”. See Registrar Email Verification. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s GUESS mark. Therefore, the Pane find that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant 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 the disputed domain names instead resolve to webpages that mimics Complainant’s own website and offer for sale counterfeit versions of Complainant’s goods. Where a respondent uses a domain name to pass itself off as affiliated with the complainant and redirect users to sell counterfeit goods, 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 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 Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides evidence of the disputed domain names resolving to webpages displaying Complainant’s trademark and product photos, as well as offering for sale counterfeit versions of Complainant’s goods. Therefore, the Panel find that Respondent fails to use the disputed domain names 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 disputed domain names in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to sell counterfeit versions of a complainant’s goods can indeed be 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). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). As previously noted, Complainant provides evidence of the disputed domain names resolving to webpages that display Complainant’s trademark and product photos and offer for sale counterfeit versions of Complainant’s goods. Therefore, the Panel agree and find that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant further contends that, because Respondent made use of a privacy service, Respondent has demonstrated bad faith registration and use. Use of a privacy service may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, Complainant provides evidence of Respondent’s use of a privacy shield. The Panel agrees with the Complainant’s conclusion, and find that Respondent’s registration and use of the disputed domain names to be in bad faith, pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's GUESS trademark, it is inconceivable that Respondent could have registered the disputed domain names without actual or constructive knowledge of Complainant's rights in the trademark. The Panel find that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel has considered if Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain names, which is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). In this case, the Panel notes the notoriety of Complainant’s trademark as well as Respondent’s use of Complainant’s trademark and product photos at the resolving webpage. The Panel find it clear that Respondent had actual knowledge of Complainant’s rights in the trademark, and thereby find that Respondent registered the disputed domain names in bad faith per 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 <guessverige.com>, <guessuomi.com>, and <guessoutletchile.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 13, 2023
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