Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2305002044796
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 Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to Forum electronically on May 16, 2023; Forum received payment on May 16, 2023.
On May 17, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.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 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@guesssklep.com, postmaster@guesslaukkuale.com, postmaster@guessskleppolska.com, postmaster@guesstasketilbud.com, postmaster@guessonlineshopdeutschland.com, postmaster@guess-schweiz.com. Also on May 18, 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 June 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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
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. 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.
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Guess? IP Holder L.P. is wholly owned by Guess?, Inc. The Panel therefore finds that there is a sufficient link between the named Complainants, and elects to treat them as one Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the disputed domain names are effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant shows that the disputed domain names have identical WHOIS information, were registered on the same date, share a common IP address, and contain the same content. The Panel therefore finds that the disputed domain names are commonly controlled by a single person/entity and will refer to the named Respondents as Respondent.
A. Complainant
1. Respondent’s <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> are confusingly similar to Complainant’s GUESS? mark.
2. Respondent does not have any rights or legitimate interests in the <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> domain names.
3. Respondent registered and uses the <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant is a manufacturer and retailer of apparel. Complainant holds a registration for the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,433,022 registered March 17, 1987).
Respondent registered the <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> domain names on March 5, 2023, and uses them to offer counterfeit versions of Complainant’s products.
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 Panel finds that Complainant has rights in the GUESS mark based upon registration with the USPTO. See also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”)
Respondent’s <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> domain names all contain the GUESS mark in its entirety, merely adding descriptive terms in Polish, Finnish, Danish, and English, as well as, the geographic terms “Polska”, “Deutschland”, and “Schweiz”, and the generic top-level domain (“gTLD”) “.com”. These changes do not distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See 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).”); see also 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.”) Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s GUESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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)); 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 does not have rights or legitimate interests in the <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> domain names as Respondent is not commonly known by the domain names, and is not licensed or authorized to use Complainant’s GUESS mark. The WHOIS information for the disputed domain names lists the registrant as “Web Commerce Communications Limited/Client Care”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant claims that Respondent does not use the <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the disputed domain names to pass off as Complainant and to offer counterfeit goods. Using a disputed domain name to pass off and offer counterfeit goods is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Complainant provides screenshots of the disputed domain names’ resolving websites which mimic Complainant’s website, feature counterfeit clothing, apparel, and accessories for sale, and reproduce images owned by Complainant. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> domain names in bad faith to offer counterfeit versions of Complainant’s products. The registration and use of a disputed domain name to offer counterfeit goods disrupts a complainant’s business and indicates bad faith under Policy ¶ 4(b)(iii), and also constitutes bad faith attraction 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 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.”); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Thus, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Complainant asserts that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the GUESS mark, and points to its long-standing use of the GUESS mark, its registration of the GUESS mark with the USPTO and other trademark offices worldwide, and the reputation and fame of the GUESS mark. The Panel agrees, noting that Respondent mimics Complainant’s website, and finds further bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied 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 <guesssklep.com>, <guesslaukkuale.com>, <guessskleppolska.com>, <guesstasketilbud.com>, <guessonlineshopdeutschland.com>, and <guess-schweiz.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 14, 2023
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