Guess? IP Holder L.P. and Guess?, Inc. v. Web Commerce Communications Limited / Client Care
Claim Number: FA2306002051656
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--nederland.com>, <guess-italia.com>, <guessdk.com>, <guess-nederland.com>, <guessitaliaoutlet.com>, <guessskor.com>, <guessbutikdanmark.com> and <guessnederlandonline.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.
Richard Hill 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--nederland.com>, <guess-italia.com>, <guessdk.com>, <guess-nederland.com>, <guessitaliaoutlet.com>, <guessskor.com>, <guessbutikdanmark.com> and <guessnederlandonline.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--nederland.com, postmaster@guess-italia.com, postmaster@guessdk.com, postmaster@guess-nederland.com, postmaster@guessitaliaoutlet.com, postmaster@guessskor.com, postmaster@guessbutikdanmark.com, and postmaster@guessnederlandonline.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 Richard Hill 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
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Complainant contends that Guess? IP Holder L.P. is a limited partnership effectively wholly owned by Guess?, Inc. to hold and license some, but not all, Guess trademark assets. Complainant asserts the activities of Guess? IP Holder L.P. are ultimately controlled by Guess?, Inc. through various other wholly owned entities. Complainants state that they are related entities that constitute a single source of goods and services.
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.” 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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that Complainant has presented evidence sufficient to establish a sufficient nexus or link between the Complainants. It will therefore treat them all as a single entity in this proceeding and the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant states that it is a highly successful retail store, offering both men and women’s apparel and goods. Complainant started in 1981 as a small California jeans company. Notwithstanding its humble beginnings, it has developed into a global lifestyle brand. While jeans remain the foundation of the company’s history and success, Complainant designs, markets, and distributes its full collections of women’s and men’s apparel throughout the United States, Canada, and worldwide. In the early 1980’s, Complainant quickly infiltrated popular culture and became an icon of the generation. Complainant created groundbreaking advertising campaigns featuring sexy, sultry models previously unknown in the industry, and turned them into superstars overnight. Models such as Claudia Schiffer, Carrè Otis, Eva Herzigova, Laetitia Casta, Carla Bruni, and Naomi Campbell launched their careers in the Complainant’s original campaigns. With striking images and fresh new products, Complainant gained momentum and nationwide recognition. In the 1980’s its product line expanded beyond men’s and women’s jeans to include baby apparel, watches, footwear, eyewear, and perfume. The 1990’s saw rapid expansion, bringing Complainant to Europe, Asia, South America, Africa, Australia, and the Middle East. In the mid-1990’s, Complainant became a public company and launched its first website at the domain name <guess.com>. In 1995, Complainant expanded its retailing business by launching an e-commerce website at <guess.com>. Today, Complainant is a two billion dollar multinational retailer. It sells clothing and accessories to enhance the casual lifestyle of people with a flair for individualism. In 2012, it celebrated 30 years in the fashion industry. Complainant asserts rights in the GUESS mark through its registration of the mark in the United States in 1987. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain names are virtually identical and confusingly similar to its GUESS mark because each one incorporates the mark in its entirety and merely adds hyphens, geographic (“nederland” or “italia” or “dk” (which stands for Denmark) or “danmark”) or generic/descriptive (“outlet” or “skor” (shoes in Swedish) or “butik”(store in Danish) or “online”) terms, and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the GUESS mark. Respondent does not use the disputed domain names for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the disputed domain names resolve to web pages that display Complainant’s mark and photos of Complainant’s products, offering for sale counterfeit versions of Complainant’s goods.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain names in order to disrupt Complainant’s business and divert customers for commercial gain by offering for sale counterfeit versions of Complainant’s goods. Respondent makes use of a privacy shield. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the GUESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark GUESS and uses it to market apparel and related goods.
Complainant’s rights in its mark date back to 1987.
The disputed domain names were registered in 2022 and 2023.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names resolve to web pages that display Complainant’s mark and photos of Complainant’s products, offering for sale counterfeit versions of Complainant’s goods.
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 disputed domain names incorporate Complainant’s GUESS mark in its entirety and merely adds hyphens, geographic (“nederland” or “italia” or “dk” (which stands for Denmark) or “danmark”) or generic/descriptive (“outlet” or “skor” (shoes in Swedish) or “butik” (store in Danish) or “online”) terms, and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position. The addition of a gTLD, hyphens, and geographic or generic terms fails sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable 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 Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i)
Complainant has not licensed or otherwise authorized Respondent to use its GUESS mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also 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). Here, 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 per Policy ¶ 4(c)(ii).
The disputed domain names resolve to web pages that mimic Complainant’s own website and offer for sale counterfeit versions of Complainant’s goods. Where the Respondent uses a domain to pass itself off as affiliated with the complainant and redirect users to sell counterfeit goods, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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).”). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain names to disrupt Complainant’s business and attempts to attract Internet users to its competing website for commercial gain by offering for sale counterfeit version of Complainant’s goods. Use of a disputed domain name to sell counterfeit versions of a complainant’s goods can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain 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)). Therefore the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the resolving websites display Complainant’s mark and photos of Complainants products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names and that this constitutes bad faith under Policy ¶ 4(a)(iii).
In addition, Respondent displays a pattern of bad faith registration of disputed domain names containing Complainant’s marks. Registration of multiple domain names containing a complainant’s mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Finally, the Panel notes, obiter dictum, that Respondent appears to have been found to have registered and used domain names in bad faith in numerous prior UDRP proceedings. Thus, on that ground also, Respondent may have engaged in a pattern of bad faith registration and use.
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--nederland.com>, <guess-italia.com>, <guessdk.com>, <guess-nederland.com>, <guessitaliaoutlet.com>, <guessskor.com>, <guessbutikdanmark.com> and <guessnederlandonline.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 27, 2023
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