Guess? IP Holder L.P. and Guess?, Inc. v. Web Commerce Communications Limited / Client Care
Claim Number: FA2306002051652
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 <guesscolombiaonlineshop.com>, <guessperupe.com>, <tiendaguesscostarica.com>, <guessoutletargentina.com>, <bolsaguessmexico.com>, <tiendaguesschile.com>, <guess-venezuela.com>, <guessuruguayuy.com>, and <guessecuadorec.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 30, 2023; Forum received payment on June 30, 2023.
On July 3, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by email to Forum that the <guesscolombiaonlineshop.com>, <guessperupe.com>, <tiendaguesscostarica.com>, <guessoutletargentina.com>, <bolsaguessmexico.com>, <tiendaguesschile.com>, <guess-venezuela.com>, <guessuruguayuy.com>, and <guessecuadorec.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 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@guesscolombiaonlineshop.com, postmaster@guessperupe.com, postmaster@tiendaguesscostarica.com, postmaster@guessoutletargentina.com, postmaster@bolsaguessmexico.com, postmaster@tiendaguesschile.com, postmaster@guess-venezuela.com, postmaster@guessuruguayuy.com, postmaster@guessecuadorec.com. Also on July 6, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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 registrations as technical, administrative, and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 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 Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
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 <guesscolombiaonlineshop.com>, <guessperupe.com>, <tiendaguesscostarica.com>, <guessoutletargentina.com>, <bolsaguessmexico.com>, <tiendaguesschile.com>, <guess-venezuela.com>, <guessuruguayuy.com>, and <guessecuadorec.com>. The domain names are being used for 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 <guesscolombiaonlineshop.com>, <guessperupe.com>, <tiendaguesscostarica.com>, <guessoutletargentina.com>, <bolsaguessmexico.com>, <tiendaguesschile.com>, <guess-venezuela.com>, <guessuruguayuy.com>, and <guessecuadorec.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, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; 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 <guesscolombiaonlineshop.com>, <guessperupe.com>, <tiendaguesscostarica.com>, <guessoutletargentina.com>, <bolsaguessmexico.com>, <tiendaguesschile.com>, <guess-venezuela.com>, <guessuruguayuy.com>, and <guessecuadorec.com> incorporates Complainant's registered GUESS trademark, adding in each instance a hyphen, a geographic name or abbreviation, a generic term, or some combination thereof, and appending the ".com" 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. Toni Tringolo / Web Commerce Communications Ltd. / Client Care, FA 2047356, supra (finding <guessromaniaonline.com> and other domain names confusingly similar to GUESS); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2008840 (Forum Sept. 22, 2022) (finding <guess-uruguay.com>, <guesshrvatskahr.com>, and other domain names confusingly similar to GUESS); Guess? IP Holder L.P. & Guess?, Inc. v. Web Commerce Communications Ltd. / Client Care, FA 2006831 (Forum Aug. 30, 2022) (finding <guess-southafrica.com>, <guessaustraliaau.com>, and other domain names confusingly similar to GUESS); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2001502 (Forum July 26, 2022) (finding <tiendaguesscolombia.com> and other domain names 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 other decisions involving the same parties, including 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 other decisions involving the same parties, including 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 <guesscolombiaonlineshop.com>, <guessperupe.com>, <tiendaguesscostarica.com>, <guessoutletargentina.com>, <bolsaguessmexico.com>, <tiendaguesschile.com>, <guess-venezuela.com>, <guessuruguayuy.com>, and <guessecuadorec.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 1, 2023
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