Guess? IP Holder L.P. and Guess?, Inc. v. Web Commerce Communications Limited / Client Care
Claim Number: FA2306002051649
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 <guess-outlet-greece.com>, <guess-outlet-schweiz.com>, <guess-webshop.com> and <guesspuertorico.com>, (‘the Domain Names’) 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on June 30, 2023; Forum received payment on June 30, 2023.
On July 3, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <guess-outlet-greece.com>, <guess-outlet-schweiz.com>, <guess-webshop.com> and <guesspuertorico.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 July 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@guess-outlet-greece.com, postmaster@guess-outlet-schweiz.com, postmaster@guess-webshop.com, postmaster@guesspuertorico.com. Also on July 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 July 27, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, 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.” Guess? IP Holder LP is wholly owned by Guess? Inc. and holds trade mark registrations on behalf of the latter. The panel holds that both companies have the sufficient nexus to both bring this Complaint.
A. Complainant
Complainant owns the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered, inter alia, in the USA for clothing.
The Domain Names are confusingly similar to Complainant’s GUESS mark merely adding descriptive term(s) and/or a hyphen which do not distinguish the Domain Names from the Complainant’s mark. The addition of the gTLD .com is irrelevant to the confusing similarity analysis.
Respondent has no rights or legitimate interest in the Domain Names. Respondent is not commonly known by the Domain Names. The Complainant has not licensed the Respondent to use the Complainant’s mark. The Domain Names registered in 2023 have been pointed to almost identically constructed web sites purporting to sell the Complainant’s clothing using the Complainant’s mark in its logo form as a masthead and using images from the Complainant to suggest the site is an official site of the Complainant, but is selling counterfeit goods. The use is commercial so this cannot be legitimate non commercial or fair use of the Domain Names. The Domain Names have been registered and used in bad faith confusing and diverting Internet users for commercial gain and disrupting the Complainant’s business with competing activity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered, inter alia, in the USA for clothing.
The Domain Names registered in 2023 have been pointed to almost identically constructed web sites purporting to sell the Complainant’s clothing using the Complainant’s mark in its logo form as a masthead and using images from the Complainant to suggest the site is an official site of the Complainant.
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 Domain Names in this Complaint combines the Complainant’s GUESS mark (registered in the USA for clothing with first use recorded as 1981), the generic terms ‘outlet’, ‘webshop’, ‘Greece’, ‘schweiz’ meaning ‘Switzerland’ and ‘Puerto Rico’ and/or a hyphen or hyphens and the gTLD .com.
Punctuation marks such as hyphens and the addition of generic terms do not serve to distinguish any of the Domain Names from the Complainant’s GUESS mark which is still identifiable within the Domain Names. 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 and the differences between the domain name and the mark it contains are insufficient to differentiate one from the other for the purposes of the Policy). See also Health Devices Corp. v Aspen STC, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).”).
The gTLD .com does not serve to distinguish the Domain Names from the Complainant’s GUESS mark. See Trip Network Inc. v Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a domain name is irrelevant to a Policy 4 (a)(i) analysis).
Accordingly, the Panel finds that the Domain Names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Names. The Complainant has not authorised the Respondent to use the Complainant’s GUESS mark. See 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). The use of the Domain Names is commercial and so cannot be legitimate non commercial use.
The web sites attached to the Domain Names have been using the Complainant's mark and its logo as a masthead and images taken from the Complainant to offer goods purporting to be those of the Complainant. They did not make it clear that there is no commercial connection between the sites and the Complainant and the web sites appear official. The Panel finds this use is deceptive. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services).
The Respondent has not answered this Complaint and has not rebutted the prime face case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they have been offering products under the Complainant’s mark in its logo form as a masthead and using images taken from the Complainant giving the impression that the site attached to the Domain Name is official. The use of the Complainant’s logo and the use of images taken from the Complainant on the sites attached to the Domain Names proves that the Respondent is aware of the Complainant and the Complainant’s rights, business and products.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web sites likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(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 <guess-outlet-greece.com>, <guess-outlet-schweiz.com>, <guess-webshop.com> and <guesspuertorico.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 27, 2023
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