Guess? IP Holder L.P. and Guess?, Inc. v. David Whaley / Annett Urner / Client Care / Web Commerce Communications Limited / Antonia Lewellyn
Claim Number: FA2306002047201
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 David Whaley / Annett Urner / Client Care / Web Commerce Communications Limited / Antonia Lewellyn (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guessmexicotiendas.com>, <guess-cz.com>, <guessbucuresti.com>, <sklepguesspolska.com>, <guesssuomifi.com>, <outletguessportugal.com>, <guessczonline.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Web Commerce Communications Limited dba WebNic.cc; and PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 1, 2023; Forum received payment on June 1, 2023.
On June 2, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Web Commerce Communications Limited dba WebNic.cc; and PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <guessmexicotiendas.com>, <guess-cz.com>, <guessbucuresti.com>, <sklepguesspolska.com>, <guesssuomifi.com>, <outletguessportugal.com>, and <guessczonline.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Web Commerce Communications Limited dba WebNic.cc; and PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Web Commerce Communications Limited dba WebNic.cc; and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Web Commerce Communications Limited dba WebNic.cc; and PDR Ltd. d/b/a PublicDomainRegistry.com registration agreements 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 June 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@guessmexicotiendas.com, postmaster@guess-cz.com, postmaster@guessbucuresti.com, postmaster@sklepguesspolska.com, postmaster@guesssuomifi.com, postmaster@outletguessportugal.com, postmaster@guessczonline.com. Also on June 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 June 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In this proceeding 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.” 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.”
Complainant Guess? IP Holder L.P. is a holding company concerned with Complainant Guess?, Inc.’s intellectual property. Notably, Guess IP Holder L.P. licenses certain Guess? trademarks and corresponding registrations. Furthermore, Guess? IP Holder L.P. is wholly owned and controlled by Guess?, Inc. The Panel therefore finds that the two nominal complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they can be treated as if a single entity. Notably, there is no objection by Respondent to the two named Complainants proceeding together as if one. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that notwithstanding any differences in the domain registration records for the at-issue domain names the at-issue domain names are nevertheless effectively controlled by the same person or entity. 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.”
The at-issue domain names are similarly constructed as each domain name consists of Complainant’s trademark and also contains geographic or generic terms, with all followed by the “.com” top-level domain name. Two of the at-issue domain names have identical WHOIS information. The domain names all share the same IP address and link to what appear to be identical websites. Thus, at-issue domain names seem more likely than not to be related to, or controlled by, the same person, persons, or entity. Importantly, Complainant’s position that the domain names’ registrants be treated as a single entity is unopposed. Therefore, the Panel elects to treat the at-issue domain names’ registrants as a single entity for the purposes of this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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”).
Respondent’s <guessmexicotiendas.com>, <guess-cz.com>, <guessbucuresti.com>, <sklepguesspolska.com>, <guesssuomifi.com>, <outletguessportugal.com>, and <guessczonline.com> domain names are confusingly similar to Complainant’s mark because each one incorporates the GUESS mark in its entirety and adds a geographic or generic term and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the at-issue domain names. Respondent is not commonly known by any at-issue domain name and Complainant has not authorized or licensed Respondent any rights in the GUESS? mark. Additionally, Respondent does not use the at-issue domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the at-issue domain names address webpages that display Complainant’s mark and photos, offering for sale counterfeit versions of Complainant’s goods.
Respondent registered and uses the at-issue in bad faith. Respondent registered the at-issue in order to disrupt Complainant’s business and divert customers for commercial gain. Respondent makes use of a privacy shield. Finally, Respondent registered the at-issue with actual knowledge of Complainant’s rights in the GUESS? mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GUESS? mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the GUESS? trademark.
Respondent uses the at-issue domain names to address a website mimicking Complainant’s genuine website and there offers counterfeit or unauthorized GUESS? products for sale.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has multiple trademark registrations with multiple agencies worldwide for its GUESS? mark, including registrations with the USPTO. Each such registration provides sufficient evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”); see also, Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain names each contain Complainant’s GUESS? trademark less its impermissible question mark, and includes one or more generic terms, with all followed by the “.com” top level domain name. The differences between any of Respondent’s at-issue domain names and Complainant’s GUESS? trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <guessmexicotiendas.com>, <guess-cz.com>, <guessbucuresti.com>, <sklepguesspolska.com>, <guesssuomifi.com>, <outletguessportugal.com>, and <guessczonline.com> domain names are each confusingly similar to Complainant’s GUESS? trademark. See 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); see also, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”);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.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of any of the at‑issue domain names. 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)”).
WHOIS information for the at-issue domain names identifies the domain names’ nominal registrants as “David Whaley / Annett Urner / Client Care / Web Commerce Communications Limited / Antonia Lewellyn” and the record before the Panel contains no evidence that tends to prove that any of the nominal respondents is commonly known by an at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by either <guessmexicotiendas.com>, <guess-cz.com>, <guessbucuresti.com>, <sklepguesspolska.com>, <guesssuomifi.com>, <outletguessportugal.com>, or <guessczonline.com> for the purposes of 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).
Respondent’s confusingly similar domain names address a website entitled GUESS that mimics Complainant’s official website while offering counterfeit and competitive apparel under Complainant’s GUESS? trademark. Respondent’s use of the at-issue domain names to pass itself off in this manner constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(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).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to address a website mimicking Complainant’s official website that offers unauthorized GUESS? products or competing products for sale. Doing so is disruptive to Complainant’s business and shows Respondent’s attempt to attract internet users, confused as to the domain names’ sponsorship, to the at-issue domain names and their web content. Respondent’s use of the domain names in this manner indicates bad faith regarding Respondent’s registration and use of the domain names under Policy ¶ 4(b)(iii) and under Policy ¶ 4(b)(iv). See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA1410001587466 (Forum Dec. 13, 2014) (“The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)).
Additionally, Respondent had actual knowledge of Complainant’s rights in the GUESS? trademark when it registered the <guessmexicotiendas.com>, <guess-cz.com>, <guessbucuresti.com>, <sklepguesspolska.com>, <guesssuomifi.com>, <outletguessportugal.com>, and <guessczonline.com> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain names to mimic Complainant’s genuine website and offer counterfeit versions of Complainant’s GUESS? products. Respondent’s registration and use of confusingly similar domains names with knowledge of Complainant’s trademark rights in GUESS? indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessmexicotiendas.com>,<guess-cz.com>, <guessbucuresti.com>, <sklepguesspolska.com>, <guesssuomifi.com>, <outletguessportugal.com>, and <guessczonline.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 1, 2023
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