Guess? IP Holder L.P. and Guess?, Inc. v. Allison Ogren / Client Care / Web Commerce Communications Limited
Claim Number: FA2308002057133
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 Allison Ogren / Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <guess-mexico.com> and <guessmexico.net>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and Web Commerce Communications Limited dba WebNic.cc.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on August 10, 2023. Forum received payment on August 10, 2023.
On Aug 12, 2023; Aug 14, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <guess-mexico.com> and <guessmexico.net> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and Web Commerce Communications Limited dba WebNic.cc have verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and Web Commerce Communications Limited dba WebNic.cc registration agreements 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 August 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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-mexico.com and postmaster@guessmexico.net. Also on August 17, 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 September 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 ISSUES
A. Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of 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.”
Complainant Guess? IP Holder L.P. is a wholly owned subsidiary of Complainant Guess?, Inc. The Panel accepts that the parent/subsidiary relationship between Complainants and their history of use of the GUESS trademark constitutes a sufficient nexus or link such that each may claim to have rights to the <guess-mexico.com> and <guessmexico.net> domain names listed in the Complaint. Hence this decision refers to them collectively as Complainant.
B. Multiple Respondents
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”. Paragraph 1(d) of Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant has shown that the domain names share a common IP address and both have a similar naming pattern and are comprised of the same constituent elements. Moreover, the WhoIs information provided for <guessmexico.net> appears to be false.
The Panel finds the <guess-mexico.com> and <guessmexico.net> domain names to be effectively controlled by the same person and/or entity, which is operating under several aliases. Hence this decision refers to Allison Ogren / Client Care / Web Commerce Communications Limited as “Respondent”.
A. Complainant
Complainant has rights in a multitude of GUESS trademarks and service marks in connection with clothing, apparel, and accessories and associated retail services, in the US and in Mexico, and in numerous other countries.
Both of the <guess-mexico.com> and <guessmexico.net> domain names are confusingly similar to Complainant’s world-famous GUESS mark.
Respondent has no rights or legitimate interests in the domain names.
Respondent is not commonly known as “guess,” “guess-mexico.com,” “guessmexico.net,” or any similar variation thereof. Complainant is not associated with Respondent in any way and has not granted Respondent permission to use the GUESS mark or any variation thereof within the domain names, which do not currently resolve to active websites. Such use does not constitute a bona fide offering of services nor any legitimate non-commercial use.
The domain names were registered and are used in bad faith. Upon
information and belief, Respondent registered the domain names as part of a pattern of conduct, to derive a profit from the wrongful and illegal use of Complainant’s mark. Complainant has never given permission for Respondent to use the GUESS mark in the domain names, and Respondent is not a licensee authorized to use Complainant’s GUESS mark in the domain names or in any other manner. Moreover, given the reputation of the GUESS mark, registration and use in bad faith can be inferred. Further, <guessmexico.net> was registered on June 21, 2022, the same date that the domain name <guessmalaysiasale.com> was registered. That domain name was transferred to Complainant along with 8 other domain names that all feature the format GUESS + foreign location/descriptive wording. Moreover, the named Respondent for <guess-mexico.com> has been the named Respondent in over 50 cases initiated by Complainant, resulting in the transfer of hundreds of infringing domain names to Complainant. Thus, Respondent is also engaging in a pattern of activity against a competitor, which further supports bad faith registration and use under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the GUESS mark through registrations of the mark including with the USPTO (e.g., Reg. No. 1,433,022 registered March 17, 1987). The Panel finds Respondent’s <guess-mexico.com> and <guessmexico.net> domain names to be confusingly similar to Complainants mark because they incorporate the GUESS mark in its entirety, adding the geographic term “Mexico”, and, in one case, a hyphen. These additions do nothing to distinguish the domain names from the mark, and indeed contribute to confusion, since Complainant operates multiple retail stores in Mexico. The inconsequential “.com” and “.net” generic top-level domains (“gTLDs”) may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <guess-mexico.com> and <guessmexico.net> domain names were registered on February 19 and June 21, 2022 respectively, long after Complainant has shown that its GUESS mark had become famous. Neither of the domain names resolves to an active website.
These circumstances, together with Complainants’ assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <guess-mexico.com> and <guessmexico.net> domain names. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA 1849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
The circumstances set out above in relation to the second element and Complainant’s account of Respondent’s history of registering similar domain names incorporating Complainant’s GUESS mark, together with a geographic term, satisfy the Panel that Respondent was fully aware of Complainant’s famous GUESS mark when Respondent registered the <guess-mexico.com> and <guessmexico.net> domain names and that Respondent did so for the purposes set out in paragraphs 4(b)(ii) and (iii) of the Policy and that Respondent has engaged in a pattern of such conduct.
Accordingly, the Panel finds that the domain names were registered and are being used in bad faith.
Complainant has established this element.
Complainant 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-mexico.com> and <guessmexico.net> domain names be TRANSFERRED from Respondent to Complainant Guess? IP Holder L.P.
Alan L. Limbury, Panelist
Dated: September 7, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page