Guess? IP Holder L.P. and Guess?, Inc. v. Toni Tringolo / Web Commerce Communications Limited / Client Care
Claim Number: FA2306002047356
Complainant is Guess? IP Holder L.P. and Guess?, Inc. ("Complainant"), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondents are Toni Tringolo / Web Commerce Communications Limited / Client Care, Malaysia ("Respondents").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guesstr.net>, <guessturkiyeonline.com>, <guess-uzletek.com>, <guessturkiyeonllne.com>, <guesstr.com>, <guessromania.com>, <guessuzletek.com>, <guessromaniaoutlets.com>, <guessromaniaonllne.com>, and <guessromaniaonline.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on June 2, 2023; Forum received payment on June 2, 2023.
On June 4, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by email to Forum that the <guesstr.net>, <guessturkiyeonline.com>, <guess-uzletek.com>, <guessturkiyeonllne.com>, <guesstr.com>, <guessromania.com>, <guessuzletek.com>, <guessromaniaoutlets.com>, <guessromaniaonllne.com>, <guessromaniaonline.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; that Respondent Toni Tringolo is the current registrant of <guesstr.net>; and that Respondent Web Commerce Communications Limited / Client Care is the current registrant of the other nine domain names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondents are bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED registration agreement and have 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 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2023 by which Respondents could file a Response to the Complaint, via email to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts, and to postmaster@guesstr.net, postmaster@guessturkiyeonline.com, postmaster@guess-uzletek.com, postmaster@guessturkiyeonllne.com, postmaster@guesstr.com, postmaster@guessromania.com, postmaster@guessuzletek.com, postmaster@guessromaniaoutlets.com, postmaster@guessromaniaonllne.com, postmaster@guessromaniaonline.com. Also on June 7, 2023, the Written Notice of the Complaint, notifying Respondents of the email addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents' registration as technical, administrative, and billing contacts.
Having received no response from Respondents, 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 David E. Sorkin 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 Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the disputed domain names are effectively controlled by the same person 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."
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions sets forth factors that are normally considered when a complainant is filed against multiple respondents:
[P]anels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.11 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
The domain names are similar, all combining Complainant's trademark with a geographic term or abbreviation for Turkey or Romania, a generic term related to online shopping, or both. They are all registered with the same registrar, with registration dates spanning a period of less than one year. The underlying domain name registration (whois) information for nine of the ten domain names is identical; the registration information for the tenth domain name, <guesstr.net>, is incomplete and appears to the Panel to be at least partially fictitious. The websites to which the domain names resolve or redirect all share a common IP address and display nearly identical content. Under the circumstances, the Panel finds that the disputed domain names are under the common control of a single person or entity (hereinafter "Respondent").
A. Complainant
Complainant is a retailer and its wholly owned intellectual property holding company subsidiary. Complainant has marketed and licensed apparel and other products under the GUESS mark since 1981, accumulating billions of dollars of sales. Complainant owns numerous trademark registrations for GUESS and related marks, including registrations for GUESS in standard character form in the United States, the European Union, and other jurisdictions throughout the world. Complainant also asserts common law rights in the mark, and claims that it is among the most famous and distinctive marks in retailing.
Respondent is the registrant of the disputed domain names <guesstr.net>, <guessturkiyeonline.com>, <guess-uzletek.com>, <guessturkiyeonllne.com>, <guesstr.com>, <guessromania.com>, <guessuzletek.com>, <guessromaniaoutlets.com>, <guessromaniaonllne.com>, and <guessromaniaonline.com>, registered on various dates between May 2022 and April 2023. The domain names all resolve or redirect to nearly identical websites that display Complainant's mark and offer for sale what Complainant alleges to be counterfeit versions of its products. Complainant states that Respondent is not commonly known by the disputed domain names, is not an authorized vendor or licensee of Complainant, and is not authorized to use Complainant's GUESS mark.
Complainant contends on the above grounds that each of the disputed domain names <guesstr.net>, <guessturkiyeonline.com>, <guess-uzletek.com>, <guessturkiyeonllne.com>, <guesstr.com>, <guessromania.com>, <guessuzletek.com>, <guessromaniaoutlets.com>, <guessromaniaonllne.com>, and <guessromaniaonline.com> is confusingly similar to its GUESS mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names incorporates Complainant's registered GUESS trademark, adding in each instance a hyphen, a geographic name or abbreviation ("Turkiye," "TR," or "Romania"), a generic term ("online" or a misspelling thereof, "outlets," or "uzletek," which is Hungarian for "shops"), or some combination thereof, and appending the ".com" or ".net" top-level domain. Such additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2008840 (Forum Sept. 22, 2022) (finding <guess-uruguay.com>, <guesshrvatska.com>, <guessspletnatrgovina.com>, <guessisrael.com>, <guessuruguay.com>, <guesshrvatskahr.com>, and <guessslovenija.com> confusingly similar to GUESS). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
For the same reasons as those set forth in Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2008840, supra, the Panel finds that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
For the same reasons as those set forth in Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2008840, supra, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guesstr.net>, <guessturkiyeonline.com>, <guess-uzletek.com>, <guessturkiyeonllne.com>, <guesstr.com>, <guessromania.com>, <guessuzletek.com>, <guessromaniaoutlets.com>, <guessromaniaonllne.com>, <guessromaniaonline.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 1, 2023
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