DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. Charlotte Coviello guess

Claim Number: FA2311002069422

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 Charlotte Coviello guess ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guessincjobs.store>, registered with NameCheap, Inc..

 

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 November 2, 2023; Forum received payment on November 2, 2023.

 

On November 3, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <guessincjobs.store> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@guessincjobs.store. Also on November 6, 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 28, 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 name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: Multiple Complainants

In the instant proceedings, there are two Complainants. 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."   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 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.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, Guess? IP Holder L.P. and Guess?, Inc., is a retail company. 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 on March 17, 1987). The disputed domain name  is confusingly similar to Complainant's GUESS mark as it incorporates the mark in its entirety while adding generic terms "inc" and "jobs," and the ".store" gTLD.

         

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GUESS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent is attempting to impersonate Complainant to scam third-party individuals.

         

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent is attempting to engage in a fraudulent scam whereby it impersonates Complainants in an effort to scam customers by setting up fake job interviews. Additionally, Respondent creates initial interest confusion while engaging in opportunistic bad faith and initially using a privacy service to hide its identity. Furthermore, Respondent registered the disputed domain name with constructive knowledge of Complainant's rights in the GUESS mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on October 29, 2023.

        

2. Complainant has established rights in the GUESS mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,433,022, registered on March 17, 1987).

        

3. Respondent has used the disputed domain name in connection with an email address to impersonate an employee of Complainant. 

 

4. Respondent attempts to set up fake job interviews by impersonating an employee of Complainant. 

 

5. The disputed domain name resolves to a website, which displays an error message.

 

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 based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). Complainant provides a copy of its USPTO registration for the GUESS mark (e.g., Reg. No. 1,433,022, registered March 17, 1987).  Therefore, the Panel finds that Complainant has established rights in the GUESS mark under Policy ¶ 4(a)(i).

         

Next, Complainant argues the disputed domain name <guessincjobs.store> is confusingly similar to Complainant's GUESS mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic terms "inc" and "jobs," and the ".store" gTLD. An addition to a complainant's mark such as a generic and/or descriptive term, and a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum  July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant's registered mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to the GUESS mark per 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 at-issue domain names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

         

Complainant asserts Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GUESS mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See M. Shanken Commc'ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). 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 PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) ("The WHOIS information of record lists the registrant as "Robert Chris," and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy  ¶ 4(c)(ii)."). The unmasked WHOIS information identifies Respondent as "Charlotte Coviello guess." Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

         

Complainant further contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Respondent has used the disputed domain name to engage in a fraudulent scam whereby it impersonates an employee of Complainant in an effort to scam customers by setting up fake job interviews. Respondent has sent emails emanating from the disputed domain name's server, to attempt to set up fake job interviews with unsuspecting individuals. Complainant provides a copy of email correspondence. The disputed domain name resolves to a website, which displays an error message.

 

The Panel finds that using the disputed domain name to pass off as a complainant's employee for the purpose of furthering a phishing campaign does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See FirstEnergy Corp. v. kelly Rowland Claim Number, FA2062582 (Forum October 18, 2023) ("Complainant provides copies of emails showing that Respondent has used the disputed domain name in connection with an email address to impersonate an employee of Complainant soliciting Complainant's potential customers for money. Using a disputed domain name to pass off as a complainant's employee for the purpose of furthering a phishing campaign may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).").

 

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 name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent is attempting to impersonate an employee of Complainant in connection with a phishing scheme in order to illegally profit on Complainant's goodwill and brand awareness. The Panel recalls that Complainant provides a copy of email correspondence showing that Respondent has sent emails emanating from the disputed domain name's server, to attempt to set up fake job interviews with unsuspecting individuals. Registration of a confusingly similar domain name with the intent to disrupt business by furthering an email phishing campaign can evince bad faith registration and use per Policy ¶ 4(b)(iv). See FirstEnergy Corp. v. kelly Rowland Claim Number, FA2062582 (Forum October 18, 2023) ("Registration of a confusingly similar domain name with the intent to disrupt business by furthering an email phishing campaign can evince bad faith registration and use per Policy ¶ 4(b)(iv).  Respondent has used the disputed domain name in connection with an email address to impersonate a member of Complainant's staff for purposes of soliciting Complainant's potential customers for money. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv)."). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Next, Complainant argues Respondent registered the disputed domain name with constructive knowledge of Complainant's rights in the GUESS mark. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. Complainant contends Respondent had knowledge of Complainant's rights in the mark given the longstanding use of Complainant's mark. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the GUESS mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain 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 <guessincjobs.store> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: November 29, 2023