Guess? IP Holder L.P. and Guess?, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2304002042365
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 Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessincretailjob.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on April 28, 2023; Forum received payment on April 28, 2023.
On May 1, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <guessincretailjob.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@guessincretailjob.com. Also on May 2, 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 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Guess? IP Holder L.P. is effectively wholly owned by Guess?, Inc., as Guess?, Inc. is the parent company.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) (“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”.); see also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (two complainants treated as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. Therefore, Complainants have established a sufficient nexus or link between them to treat them as a single entity in this proceeding.
A. Complainant
Complainant is a leading retailer and manufacturer of apparel. Complainant has rights in the GUESS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022 registered March 17, 1987). Respondent’s <guessincretailjob.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the GUESS mark in its entirety and adds the terms “inc,” “retail,” and “job” and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <guessincretailjob.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the GUESS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a webpage that hosts malware.
Respondent registered and uses the <guessincretailjob.com> domain name in bad faith. Respondent registered the disputed domain name to divert customers for commercial gain. The disputed domain name resolves to a website that hosts malware. Respondent makes use of a privacy shield. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GUESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a leading retailer and manufacturer of apparel. Complainant has rights in the GUESS mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,433,022 registered March 17, 1987). Respondent’s <guessincretailjob.com> domain name is confusingly similar to Complainant’s mark because it incorporates the GUESS mark in its entirety and adds the terms “inc,” “retail,” and “job” and the “.com” generic top-level domain (“gTLD”).
Respondent registered the <guessincretailjob.com> domain name on November 21, 2022.
Respondent has no legitimate interests in the <guessincretailjob.com> domain name. The domain name resolves to a website to a website blocked as dangerous, unsafe, and featuring malicious content with phishing activity. The domain name resolves to a “Deceptive Site Ahead” warning.
Respondent registered and uses the <guessincretailjob.com> domain name 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 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”).
Complainant has rights in the GUESS mark under Policy 4(a)(i) based upon the registration of the mark with the USPTO. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Respondent’s <guessincretailjob.com> domain name is confusingly similar to Complainant’s GUESS mark under Policy ¶ 4(a)(i). The domain name contains the GUESS mark in its entirety while adding in the terms “inc,” “retail,” and “job” and the “.com” gTLD.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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)).
Complainant contends that Respondent lacks rights or legitimate interests in the <guessincretailjob.com> domain name since Respondent is not commonly known by the disputed domain name 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 mark 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 name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico”. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s GUESS mark. Therefore, Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name instead resolves to a webpage that attempts to distribute malware. Where the respondent uses a domain to distribute malware or malicious content, 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 Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides evidence of the disputed domain name resolving to webpage that attempts to distribute malware or malicious content. See Compl. Ex. 7. Therefore, 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 <guessincretailjob.com> domain name in bad faith because Respondent attempts to take advantage of confusion with Complainant’s well-known mark to attract Internet users to its website for commercial gain. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Here, Complainant contends that Respondent registered the disputed domain name to take advantage of initial interest confusion with Complainant’s well-known mark. Therefore, Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that, because the disputed domain name resolves to a website that contains malware, Respondent has demonstrated bad faith registration and use. The distribution of malware is constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). The domain name resolves to a website blocked as dangerous, unsafe, and featuring malicious content with phishing activity. The domain name resolves to a “Deceptive Site Ahead” warning, which constitutes bad faith registration and use. See Capital One Financial Corp. v. Domain MANAGER / Domain Brokers, FA 1684339 (Forum Aug. 22, 2016); eBay Inc. v. Douglas Bennett, D2015-1178 (WIPO August 25, 2015). Therefore, Respondent registered and uses the disputed domain name in bad faith, pursuant to Policy ¶ 4(a)(iii).
Furthermore, use of a domain name to phish for Internet users’ personal or financial information is bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co., FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name to fraudulently acquire the personal and financial information of the complainant’s customers).
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 be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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.”). Here, Complainant provides evidence of Respondent’s use of a privacy shield. See Compl. Ex. 2. Because Respondent used the disputed domain name to distribute malware, Respondent’s use of a privacy shield likewise shows registration and use in bad faith, pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant also contends that considering the fame and notoriety of Complainant's GUESS mark, it is inconceivable that Respondent could have registered the disputed domain name without actual or constructive knowledge of Complainant's rights in the mark. Because Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, Respondent registered and uses the disputed domain name in 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). Therefore, Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessincretailjob.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 6, 2023
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