DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. Qiu Xiaofeng / Matthew Gough / Isobel Bond Majaus / Louis Brennan / Jake Perkins Wittappona / Spencer Pope Afteptips

Claim Number: FA2310002065636

PARTIES

Complainant is Guess? IP Holder L.P. and Guess?, Inc. ("Complainant"), USA, represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Qiu Xiaofeng / Matthew Gough / Isobel Bond Majaus / Louis Brennan / Jake Perkins Wittappona / Spencer Pope Afteptips ("Respondent"), International.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesslatvija.com>, <guesssouthafrica.net> and <xn--guesskengt-y5a.com>, registered with Paknic (Private) Limited and Gransy, s.r.o..

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 10, 2023; Forum received payment on October 10, 2023.

 

On October 11, 2023, Paknic (Private) Limited and Gransy, s.r.o. confirmed by e-mail to Forum that the <guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesslatvija.com>, <guesssouthafrica.net> and <xn--guesskengt-y5a.com> domain names are registered with Paknic (Private) Limited and Gransy, s.r.o. and that Respondent is the current registrant of the names. Paknic (Private) Limited and Gransy, s.r.o. have verified that Respondent is bound by the Paknic (Private) Limited and Gransy, s.r.o. 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 October 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@guesskuwait.com, postmaster@guessgreece.net, postmaster@guessbagsnz.net, postmaster@guesseesti.com, postmaster@guesslatvija.com, postmaster@guesssouthafrica.net, postmaster@xn--guesskengt-y5a.com. Also on October 12, 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 November 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, 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.

 

RELIEF SOUGHT

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." 

 

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. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) ("This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.").

 

Complainants contend that Guess? IP Holder L.P. is a Delaware limited partnership that is effectively wholly owned by Guess?, Inc. by submitting a declaration of an Officer of Guess?, Inc.. It also contends that both Guess? IP Holder L.P. and Guess?, Inc. have a sufficient trademark interest and ownership in the disputed domain name. As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as "Complainant" in this decision.

 

b.       Multiple Respondents

Complainant contends that the entities which control the disputed  domain names are effectively controlled by the same person and/or entity, which is operating under several aliases.  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."  Complainant contends that i) each of the six disputed domain names hosts nearly identical content; ii) the website at the domain name <guesslatvija.com> remains inactive; iii) each of the disputed domain names shares an IP address; and iv) all of the disputed domain names were registered on the same day, February 28, 2023. Complainant provides exhibits supporting its contentions above. The Panel finds that the disputed  domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Respondents will be collectively referred to as "Respondent." 

 

PARTIES' CONTENTIONS

A. Complainant

1) Complainant began its business in 1981 as a small California jeans company, and has since developed into a global lifestyle brand. Complainant now designs, markets, and distributes its full collection of women's and men's apparel throughout the United States, Canada, and the rest of the world. Complainant has rights in the GUESS mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022, registered March 17, 1987). The disputed domain names are identical or confusingly similar to Complainant's mark as they all contain the GUESS mark in its entirety and simply add various geographic, generic and/or descriptive terms along with a generic top-level domain ("gTLD").

 

ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the infringing domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Six of the disputed domain names are used to pass off as Complainant. The disputed domain name <guesslatvija.com> remains inactive.

 

iii) 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. Six of the disputed domain names are used to pass off as Complainant. Respondent registered the disputed domain names with actual knowledge of Complainant's rights in the GUESS mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. Complainant has established rights in the GUESS mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022, registered March 17, 1987).

 

2. Respondent registered the disputed domain names on February 28, 2023.

 

3. Each of the disputed domain names<guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesssouthafrica.net> and <xn--guesskengt-y5a.com> resolves to  a website entitled "GUESS," designed to mimic Complainant' own website, that features counterfeit clothing, apparel, and accessories for sale designed to looks like Complainants' goods, with multiple imitation products featuring the GUESS marks.

 

4. Each of the disputed domain names <guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesssouthafrica.net> and <xn--guesskengt-y5a.com> resolves to a website, which features claims and implications which associate it with the GUESS marks (including the header), and reproduces multiple images owned by Complainant.

 

5. The disputed domain name <guesslatvija.com> remains inactive. 

 

DISCUSSION

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").

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the GUESS mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,433,022, registered March 17, 1987). Registration of a mark with the USPTO is a valid showing of rights in a mark. Since Complainant provides evidence of registration of the GUESS  mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy 4(a)(i).

 

Complainant next argues that the disputed  domain names are confusingly similar to Complainant's GUESS mark. The Panel notes that each of the disputed  domain names contains the GUESS mark in its entirety while adding a geographic or generic term such as an additional geographic term. The domain names <guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesslatvija.com>, and <guesssouthafrica.net>  include "Kuwait," "Greece," "NZ," the country abbreviation for New Zealand, "Eesti," meaning Estonia, "Latvija," meaning Latvia, and "South Africa." Two of the domain names, i.e., <guessbagsnz.net> and <xn--guesskengt-y5a.com> also feature additional descriptive words. The domain name <guessbagsnz.net> includes the term "bags," which is merely descriptive of elements of Complainants' business models. The domain name <xn-- guesskengt-y5a.com> redirects to <guesskengät.com>, and "kengät" is Finnish for "boots," which is merely descriptive of Complainants' business models.

 

The addition of a gTLD and a geographic or generic term fails to sufficiently distinguish a disputed  domain name from a mark per Policy ¶ 4(a)(i). See 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 The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."). The Panel therefore finds that the disputed domain names are confusingly similar to the GUESS mark under Policy ¶4(a)(i).

 

 

Rights or Legitimate Interests

 

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), then the burden shifts to Respondent to show 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 contends that Respondent lacks rights or legitimate interests in the disputed  domain names since 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. WHOIS information may be used to determine whether a respondent is commonly known by a disputed  domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed  domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). In addition, a lack of authorization to use a complainant's mark may also indicate that a respondent is not commonly known by a disputed  domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as "Operi Manaha," and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.).

 

The unmasked WHOIS information for the disputed  domain names lists the registrant as "Qiu Xiaofeng / Matthew Gough / Isobel Bond Majaus / Louis Brennan / Jake Perkins Wittappona / Spencer Pope Afteptips." Therefore, the Panel finds Respondent is not commonly known by the disputed  domain names per Policy ¶ 4(c)(ii).

           

Complainant also argues that Respondent fails to use the disputed  domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed  domain names <guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesssouthafrica.net> and <xn--guesskengt-y5a.com> resolve to webpages that mimic Complainant's own website and offer for sale counterfeit versions of Complainant's goods while the disputed domain name <guesslatvija.com> remains inactive. Where a respondent uses a domain to pass itself off as affiliated with a 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)."). Complainant provides evidence of the disputed  domain names resolving to webpages displaying Complainant's mark and product photos, as well as offering for sale counterfeit versions of Complainant's goods. Therefore, the Panel finds that Respondent fails to use the disputed  domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).

 

The Panel notes that the disputed domain name <guesslatvija.com> resolves to a website displaying an error message. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) ("Respondent is wholly appropriating Complainant's mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).").  Accordingly, the Panel finds that Respondent fails to use the disputed  domain name <guesslatvija.com> in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed  domain names.

 

Registration and Use in Bad Faith

 

Complainant contends 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 website for commercial gain. 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 H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent's use of the disputed  domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant's business and indicated bad faith under Policy ¶ 4(b)(iii)); see also 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). As previously noted, Complainant provides screenshots of the resolving websites of the disputed  domain names <guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesssouthafrica.net> and <xn--guesskengt-y5a.com>, which display Complainant's mark and product photos and offer for sale counterfeit versions of Complainant's goods. Therefore, the Panel finds that Respondent registered and uses the disputed domain names <guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesssouthafrica.net> and <xn--guesskengt-y5a.com> in bad faith per Policy ¶ 4(b)(iii) or (iv).

 

As previously noted, the disputed domain name <guesslatvija.com> resolves to a webpage displaying an error message. The Panel observes that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) ("Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent's behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent's passive holding amounts to acting in bad faith.)

 

The particular circumstances of this case that the Panel has considered are:

 

i) Complainant began its business in 1981, and has since developed into a global lifestyle brand. Complainant now designs, markets, and distributes its full collection of women's and men's apparel throughout the United States, Canada, and the rest of the world. As such, Complainant's mark 'GUESS' is considered as being a well-known trademark, and

 

ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name <guesslatvija.com> as well as six other disputed domain names.

 

Taking into account all of the above, the Panel concludes that Respondent's passive holding of the disputed domain name <guesslatvija.com> constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent uses the disputed domain name <guesslatvija.com> in bad faith.

 

Next, Complainant contends that in light of the fame and notoriety of Complainant's GUESS mark, it is inconceivable that Respondent could have registered the disputed  domain names without actual or constructive knowledge of Complainant's rights in the mark. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant's rights in the GUESS mark at the time of registering the disputed domain names, and finds that Respondent registered the disputed domains in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <guesskuwait.com>, <guessgreece.net>, <guessbagsnz.net>, <guesseesti.com>, <guesslatvija.com>, <guesssouthafrica.net> and <xn--guesskengt-y5a.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: November 3, 2023