Guess? IP Holder L.P. and Guess?, Inc. v. Marcel OSTERMANN / Client Care / Web Commerce Communications Limited / Wang Ling
Claim Number: FA2307002054682
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 Marcel OSTERMANN / Client Care / Web Commerce Communications Limited / Wang Ling (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guessoutletcolombia.com>, <guessoutletgr.com>, <guesschileoutlet.com>, <guessoutletromania.com>, <guesshelsinki.com>, and <outletguesscolombia.com.co>, registered with Alibaba.Com Singapore E-Commerce Private Limited; Netim Sarl; Key-Systems GmbH.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on July 25, 2023; Forum received payment on July 25, 2023.
On Jul 25, 2023; Jul 28, 2023, Alibaba.Com Singapore E-Commerce Private Limited; Netim Sarl; Key-Systems GmbH confirmed by e-mail to Forum that the <guessoutletcolombia.com>, <guessoutletgr.com>, <guesschileoutlet.com>, <guessoutletromania.com>, <guesshelsinki.com>, and <outletguesscolombia.com.co> domain names are registered with Alibaba.Com Singapore E-Commerce Private Limited; Netim Sarl; Key-Systems GmbH and that Respondent is the current registrant of the names. Alibaba.Com Singapore E-Commerce Private Limited; Netim Sarl; Key-Systems GmbH has verified that Respondent is bound by the Alibaba.Com Singapore E-Commerce Private Limited; Netim Sarl; Key-Systems GmbH 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 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@guessoutletcolombia.com, postmaster@guessoutletgr.com, postmaster@guesschileoutlet.com, postmaster@guessoutletromania.com, postmaster@guesshelsinki.com, postmaster@outletguesscolombia.com.co. Also on July 31, 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 August 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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
Complainants own the world-famous GUESS brand which they have used for over 40 years in connection with their highly successful lines of men’s and women’s apparel and related goods (including women’s handbags and shoes), and retail offering of the same. Complainants own many registrations of the GUESS trademark in many countries, in both graphic and textual form, the earliest of which date to 1984. It has also, since the mid-1990’s, promoted its products at the address <guess.com>. Respondent’s domain names are confusingly similar to the GUESS mark as they incorporate the mark in its entirety and add a geographic term (e.g., “GR” which is the country code for Greece), a TLD and, in most cases, the descriptive word “outlet”.
Respondent has no rights or legitimate interests in the disputed domain names as it is not commonly known by the domains, and it is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use thereof. Rather, it resolves the domain names to websites that mimic Complainants’ own website, use copyright protected images that are owned by Complainants, and offers counterfeit products for sale.
The disputed domain names have been registered are being used in bad faith as Respondent had constructive knowledge of the GUESS mark and, given the reputation and fame of the mark, bad faith may be inferred. Further, the disputed domain names are being used, as noted above, for websites offering counterfeit products which disrupts Complainants’ business and seeks commercial gain based on a likelihood of confusion. The disputed domain names are also each registered through a privacy service which further supports a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- The two named Complainants may be consolidated into the present proceeding based on the legal relationship between the two;
- Despite using different WHOIS information for some of the disputed domain names, all of them may be consolidated into the present proceeding as it appears they are owned by a single domain name holder;
- Complainants have rights to the GUESS trademark and each of the disputed domain names is confusingly similar to the mark as they add only a geographic indication, a TLD and, in most case, the generic word “outlet”;
- Respondent has no rights or legitimate interests as it is not commonly known by the disputed domain names and, by operating websites that offer counterfeit products or not resolving one of the disputed domain names to any website content, it is not making a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use of the disputed domain names; and
- The disputed domain names were registered and are used in bad faith as demonstrated by Respondent’s offering of counterfeit goods, not resolving one of the domain names to any content at all, and by initial interest confusion.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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”).
Preliminary Matter – Multiple Complainants
In the instant proceedings, there are two named Complainants. The relevant rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e). Rule 3(a) states, “Any 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.”
The two named Complainants in this matter are Guess? IP Holder L.P. and Guess?, Inc. Submitted into evidence is a signed Declaration from the Deputy General Counsel and Assistant Secretary of Guess?, Inc. stating that “Guess? IP Holder L.P. is a Delaware limited partnership that is effectively wholly owned by Applicant Guess?, Inc” and that “the trademark activities of these two companies – including trademark selection, adoption, use, quality, and enforcement – are coordinated and managed together.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one 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.
See also Procter & Gamble Business Services Canada Company, The Gillette Company LLC, Braun GmbH and The Procter & Gamble company v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 66478, Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 53397, Privacy Protection, HOSTING UKRAINE LTD / Коваленко Валерий/Konovalenko Valeriy, Privacy Protection, HOSTING UKRAINE LLC / Коваленко Валерий/Konovalenko Valeriy, D2017-1493 (WIPO Oct. 6, 2017) (consolidation of multiple complainants found to be equitable and procedurally efficient where “[t]he Complainant Procter & Gamble is a parent company of the First Three Complainants. Therefore, the evidence shows that the Complainants have a common grievance against the Respondents by virtue of having common legal interest.”).
In the present case, the Complaint and submitted Declaration have noted the relationship between the two named Complainants. Respondent has provided no response or other submission in this case and so it has not contested this relationship. Further, each of the Complainants are named as the owner of certain registrations for the GUESS trademark which is highly relevant to this case. Under the circumstances the Panel finds that the there is a link between the two named Complainants and that they have a specific common grievance against the Respondent who has engaged in a common action that has affected the Complainants’ in a similar fashion.
For the sake of simplicity, Guess? IP Holder L.P. and Guess?, Inc. will hereafter be referred to in this decision as “Complainant” unless otherwise noted.
Preliminary Matter – Multiple Respondents
In the instant proceedings, “Complainant alleges that each of the Disputed Domain Names share one Respondent”. Paragraph 3(c) of 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.” Despite being presented with WHOIS records that name different Registrants, prior Panels have held that consolidation of a case against multiple domain names is appropriate where there are other similarities that indicate a likelihood of common ownership. See, e.g., American Airlines, Inc. v. Ramadhir Singh, WhoisGuard Protected, WhoisGuard, Inc. / Reema Gupta, Ballu Balwant, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lucy Lionel, Lucy99, Red Keep, D2021-0294 (WIPO Mar. 11, 2021) (consolidation upheld based on “the similar content and layout of the websites that were linked to the disputed domain names; the fact that all the disputed domain names target a specific sector and the same trademark within this sector; the similar patterns in the disputed domain names; and the identical reaction of the Respondents to the Complaint, not replying to the Complainant’s contentions.”); Global Uprising, PBC v. Qiu Xiaofeng / Keira Stephens, UDRP-105588 (CAC Aug. 21, 2023) (consolidation of domain names supported by similar naming patterns, website content, and IP addresses).
Complainant notes that “guessoutletgr.com; guesschileoutlet.com; guessoutletromania.com; guesshelsinki.com, have near identical Whois information, and have the same Registrant.” The Panel accepts this as accurate given the identification of a common Registrant in the Registrar verification email to the Forum relating to these four above-mentioned domain names.
Complainant further states that “each of the Domain Names guessoutletcolombia.com, guessoutletgr.com, guesschileoutlet.com, guessoutletromania.co [sic][i], guesshelsinki.com share a common IP address”[ii] and it submits evidence confirming that these five domain names all translate to the same IP address of 196.196.231.198. No IP information is provided for the domain name <outletguesscolombia.com.co> and the Panel, in its own attempt, was unable to translate this domain name to any IP address.
Further, Complainant states that “screenshots for the Domain Names guessoutletcolombia.com, guesschileoutlet.com, guessoutletromania.co [sic], guesshelsinki.com, and outletguesscolombia.com.co show the same infringing content”. The Panel’s review of the screenshots of the websites that resolve from the above-mentioned domain names shows that four of them display nearly identical content whereas the fifth, <outletguesscolombia.com.co> displays content that is somewhat different, though still sufficiently similar to the other four in overall look and feel (and use of text and links in the Spanish language, seemingly reduced prices, etc.) that it is reasonable to conclude that all websites derive from the same source. The <guessoutletgr.com> domain does not appear to resolve to any website.
The WHOIS records list different Registrants for some of the disputed domain names and Complainant’s evidence could have been presented in a more clear and robust manner. However in light of the various similarities and intersections – particularly the use of similar IP addresses, the similarity in website content, and the common naming convention using Complainant’s mark plus a geographic term and, in most cases, the word “outlet” – and in the absence of participation in these proceedings by any party claiming to be a Registrant of these domain names, the Panel determines it is more likely than not that all of the disputed domain names are under common control by the same domain name holder and that the WHOIS records contain various aliases. As such, there is no inequity in consolidating these domain names into the present case, which will proceed against all of them, and their holder will be referred to in the singular as “Respondent”.
The Panel notes Complainant’s request that English be the language of this administrative proceeding pursuant to UDRP Rule 11(a). As the Registrars for all of the disputed domain names have indicated that English is, in fact, the language of their respective registration agreements, the Panel considers this matter to be moot and need not address it further.
Complainant claims rights in the GUESS mark through numerous trademark registrations, including with the trademark offices of the United States of America, Colombia, Finalnd, Romania, Chile, Greece, and the European Union. Registration of a mark with such agencies is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”); see also Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides screenshots of its registration certificates or of the websites from the above-mentioned trademark agencies as evidence of its registration of the GUESS mark and so the Panel finds that Complainant has demonstrated rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that each of the disputed domain names are confusingly similar to its GUESS mark since they reproduce the entire mark, simply adding a geographic indicator, a TLD and, in all but one case, the generic term “outlet”. When a disputed domain name wholly incorporates a complainant’s mark, Panels have most often found the addition of generic or descriptive terms to be insufficient to distinguish the domain name from the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Similarly, TLDs, whether of the generic or country code variety, are usually irrelevant for purposes of the Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Complainant argues that the use of geographic terms “only exacerbates the likelihood of confusion since Complainants do business within the geographic locations incorporated into those Domain Names.” It further notes that the added term “outlet” increases confusion as “is merely descriptive of an element of Complainants’ business model (e.g., Complainants’ products are sold at a discount through factory outlets, among other types of retail establishments).” As Complainant’s GUESS mark is still easily recognizable within and forms the central focus of the disputed domain names, the Panel finds that the addition of geographic and generic terms plus TLDs does not avoid confusing similarity under ¶ 4(a)(i) and that Complainant has satisfied this element of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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.”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not authorized to use Complainant’s GUESS mark and is not commonly known by the disputed domain names. Panels have routinely held that WHOIS information may be considered when determining whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sep. 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); See, e.g., Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS records for the disputed domain names, as stated in the screenshots submitted into evidence by Complainant as well as in the Registrar verification emails to the Forum, do not contain any name or other information that relates to or suggests the word “guess” and Respondent has not participated in this case to claim that it is known by any of the domain names. Therefore, the Panel has no evidence upon which to find that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant further asserts that Respondent is not using the disputed domain names for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use of such domain names. Rather, Respondent uses the disputed domain names to divert and deceive customers and offer counterfeit goods. Impersonation, or passing oneself off as a complainant and diverting users to a respondent’s webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant asserts that Respondent infringes rights in the GUESS trademark and uses copyrighted images which are owned by Complainant, misdirects traffic to Respondent, and offers “counterfeit clothing, apparel, and accessories for sale designed to looks like Complainants’ goods, with multiple imitation products featuring the GUESS Marks.” Submitted into evidence are screenshots of the resolving <guessoutletcolombia.com>, <guesschileoutlet.com>, <guessoutletromania.com>, <guesshelsinki.com>, and <outletguesscolombia.com.co> websites, each of which prominently displays the GUESS mark at the top and many photographs of Complainant’s products, some of which display the mark and its related graphic logo. Below such photos are displayed one price in a grey, strikethrough font and a significantly lower price in a black font, all in the typical manner of indicating reduced prices. The footers of each of these sites display the term “Copyright © 2023” followed by the respective domain name for that site.
Complainant further claims that Respondent “illegally reproduces multiple images which are owned by Complainants”. While some of the images on Respondent’s websites display products bearing the GUESS mark, there is no other evidence submitted to support this claim that the images belong to Complainant.[iii]
The Panel notes that the Complaint makes no mention of any activity by the <guessoutletgr.com> domain name, no screenshot of this site is submitted, and the domain name is not individually mentioned in Complainant’s arguments relating to Policy ¶ 4(c)(i) or (iii). The Panel has unsuccessfully attempted to browse to this domain name and has found no screenshots of any web content at the www.archive.org website. As such, it will be assumed that the domain name does not resolve to any website. A Respondent failing to make use of a confusingly similar domain name in relation to a website typically indicates the lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message ‘website coming soon!’”). See also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”) The Panel can find no use of the <guessoutletgr.com> domain name and so, in line with the foregoing decisions, it does not see any ground upon which to conclude that Respondent has any rights or legitimate interests in the domain.
Finally, Complainant asserts that “Respondent is not using the Domain Names to comment upon Complainants. Thus, Respondent has no free speech interest in the Domain Names.” There is no evidence to suggest that the disputed domain names have been used in a legitimate noncommercial or fair manner under Policy ¶ 4(c)(iii) and so the Panel accepts Complainant’s assertion on this point.
Although the Complaint is lacking in a number of technical respects, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and that there is no evidence of Respondent using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or of its making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
For the reasons stated above, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent had “at least constructive knowledge of Complainant’s rights in its GUESS mark” at the time of registering the disputed domain names. Panels typically disregard arguments of bad faith based on this legal construct as UDRP cases typically decline to find bad faith or prior knowledge as a result of constructive knowledge except under very specific circumstances. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith…”).
Next, the Complaint sets forth the argument that “[g]iven the reputation and fame of the GUESS trademark, registration in bad faith can be inferred.” While Complainant refers to its mark as “world-famous” and “well-known”, and mentions that a number of celebrity fashion models began their careers by promoting GUESS branded apparel, it submits no evidence to support these claims or the mark’s reputation beyond a single page from its <guess.com> website containing a few short paragraphs describing the history of the company.[iv]
However, the Panel will consider whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately form a foundation upon which to base an argument for bad faith. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (prior knowledge found based on “Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, the fact that Respondent’s resolving websites display the GUESS mark and images of certain products bearing the mark and its related graphic logo leads the Panel to find it a near certainty that Respondent did have actual knowledge of Complainant’s rights in its mark at the time that it registered the disputed domain names.
Complainant further argues that Respondent registered and uses the disputed domain names in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing websites for commercial gain. Where the respondent uses a disputed domain name to pass itself off as a complainant, Panels have found 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 Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). See also The American Kennel Club, Inc. v. Linh Hoang, D2021-3719 (WIPO Jan. 19, 2022) (“Having drawn Internet users to its website by using a confusingly similar approximation of Complainant’s mark and mimicking its logo, Respondent is fraudulently soliciting payments from website visitors. Such conduct is emblematic of bad faith use of the disputed domain name.”) Under the circumstances of Respondent’s use of the five resolving domain names as described in the prior section, the Panel finds that Respondent has disrupted Complainant’s business and drawn users to its website for commercial gain based upon confusion with the GUESS trademark. Thus, it has registered and used these five disputed domain names in bad faith per Policy ¶ 4(b)(iii) and (iv).
As for the <guessoutletgr.com> domain name, the Complaint makes no individual mention of it and makes no arguments specific to it in its section on Policy ¶ 4(a)(iii). However, the Complaint does assert, in general terms, that “[t]he mere initial interest confusion caused by the similarity between the GUESS Mark and the Domain Names is sufficient for a finding of bad faith” and that “Respondent intentionally uses the Domain Names to confuse consumers as to the source or affiliation of Respondent’s online activities…” (the Panel notes use of the plural word “Names”). Under the circumstances of the present case, the Panel will accept these statements as including all of the disputed domain names, including <guessoutletgr.com>. The non-use of a disputed domain name may suggest bad faith under Policy ¶ 4(a)(iii) even though it is not specifically enumerated as an example under Policy ¶ 4(b). See Frank, Weinberg & Black P.L. v. Allison D’Andrea, D2013-1578 (WIPO Oct. 18, 2013) (“Paragraph 4(b)’s examples are expressly non-exclusive…”) See also Opportunity Financial, LLC v. Warut Chuaynoo, FA 1994278 (Forum June 2, 2022) (“Respondent’s failure to actively use the at-issue domain name shows bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). * * * Respondent’s passive holding of the at-issue domain name suggests Respondent’s present intent to capitalize on the confusion between the <opploansmyoffer.com> domain name and Complainant’s trademark at some time in the future.”). The Panel references its own review of the current and archived non-resolution of the <guessoutletgr.com> domain name to any website as evidence of Respondent’s inactive holding. As Respondent has provided no alternative explanation for its actions, the Panel finds that the evidence in this case weighs in favor of finding that Respondent registered and uses the <guessoutletgr.com> domain name in bad faith under Policy ¶ 4(a)(iii).
As for Complainant’s assertion of initial interest confusion, this has been described in two contexts: “[1] confusion of authorship upon reading the content of a website and [2] confusion of an Internet user who is seeking the mark owner's website but is attracted to the critic's website by its similarity (in this case, identity) with a recognized mark.” See Domain Name Arbitration, 6.01-D.2 (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019), citing Justice for Children v. R neetso / Robert W. O'Steen, D2004-0175 (WIPO June 4, 2004). In the recent decision of LuxAGe Group Inc v. Abel NATAF, FA 2049417 (Forum July 18, 2023), the Panel noted that “[u]nder Policy ¶ 4(a)(iii), initial interest confusion is evidence of bad faith and may occur where a disputed domain name is obviously related to the complainant’s mark.” It went on to find initial interest confusion by the <luxurybazaar.store> domain name where “Complainant’s LUXURY BAZAAR mark is fully incorporated into the disputed domain name” and held that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Here, Complainant’s GUESS mark is fully incorporated into each of the disputed domain names as is the generic word “outlet” in each of the domains except for <guesshelsinki.com> (on which bad faith is independently found based on that domain’s website resolution). The Panel finds Respondent’s use of the word “outlet” to be particularly relevant here. This word has a defined meaning within the retail industry and it modifies the word “guess” in the disputed domain names thus leading the viewer to consider the latter as a trademark rather than as a generic term indicating “an estimate or conjecture”. Oxford Languages, Oxford University Press. Given Respondent’s overall actions in this dispute, the Panel finds that bad faith registration and use of the disputed domain names is further supported under the theory of initial interest confusion.
Finally, Complainant argues that Respondent’s use of a WHOIS privacy service when registering the disputed domain names further demonstrates bad faith. Prior decisions have noted that using a privacy service may demonstrate a bad faith attempt to hide one’s identity and hinder a trademark owner from attempting to assert its rights. See Microsoft Corporation v. Arif Khan, FA 1907105 (Forum Aug. 31, 2020) (“in the context of this case Respondent’s use of a WHOIS privacy service further supports a finding of bad faith under Policy ¶ 4(a)(iii).”). Complainant asserts that “the Domain Names are each also registered through a privacy service, giving rise to a presumption of bad faith registration and use under the Policy”. However, the Panel’s review of the public WHOIS records for the disputed domain names reveals that they either state “REDACTED FOR PRIVACY” or present no Registrant or Organization information at all. This does not indicate Respondent’s use of a privacy service but, rather, the Registrars’ redaction of data of its own accord. As such, the Panel is unable to agree with Complainant that bad faith is further supported by the use of WHOIS privacy services.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessoutletcolombia.com>, <guessoutletgr.com>, <guesschileoutlet.com>, <guessoutletromania.com>, <guesshelsinki.com>, and <outletguesscolombia.com.co> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 25, 2023
[i] The disputed domain name <guessoutletromania.com> is incorrectly stated as “<guessoutletromania.co>” a number of times in the Complaint.
[ii] The Complaint appears to incorrectly refer to two submitted Exhibits. Complainant’s Exhibit 3 is identified in the Complaint as “IP Address information for Domain Names” and Exhibit 4 as “Representative Screenshots of Website at Domain Names”. However, it is, in fact, submitted Exhibit 3 that shows website screenshots and Exhibit 4 that shows IP addresses.
[iii] Complainant submits a single screenshot of its <guess.com> website, a page titled “Heritage, The Guess Story”, which displays a photo of Complainant’s founders and discusses the history of the company.
[iv] It is also noted that trademark registrations, even those spanning the globe, while proving rights to a mark, do not speak to the scope or reputation of the brand with consumers or within a complainant’s industry. Support for such claims requires additional and appropriate evidence.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page