DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. Hollie HortonAnclourne / John Nash / Qiu Xiaofeng

Claim Number: FA2312002075532

 

PARTIES

Complainant is Guess? IP Holder L.P. and Guess?, Inc. ("Complainant"), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondents are Hollie HortonAnclourne, Germany; John Nash, Finland; and Qiu Xiaofeng, China ("Respondents").

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <guesscolombia.org>, <guessoutletcanada.org>, <guessportugal.biz>, <guessisrael.biz>, <guessuk.biz>, and <guessfrancesac.com>, registered with Paknic (Private) Limited; and <guessireland.com> and <guessdk.net>, registered with 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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 15, 2023; Forum received payment on December 15, 2023.

 

On December 17, 2023, Paknic (Private) Limited confirmed by email to Forum that the <guesscolombia.org>, <guessoutletcanada.org>, <guessportugal.biz>, <guessisrael.biz>, <guessuk.biz>, and <guessfrancesac.com> domain names are registered with Paknic (Private) Limited, and that Respondent Qiu Xiaofeng is the current registrant of the names, is bound by the Paknic (Private) Limited registration agreement, and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). An equivalent confirmation was received from Gransy, s.r.o. on December 18, 2023, with regard to the <guessireland.com> and <guessdk.net> domain names and Respondents Hollie HortonAnclourne and John Nash.

 

On December 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2024 by which Respondents could file a Response to the Complaint, via email to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts, and to postmaster@guesscolombia.org, postmaster@guessoutletcanada.org, postmaster@guessportugal.biz, postmaster@guessisrael.biz, postmaster@guessireland.com, postmaster@guessuk.biz, postmaster@guessdk.net, and postmaster@guessfrancesac.com. Also on December 21, 2023, the Written Notice of the Complaint, notifying Respondents of the email addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts.

 

Having received no response from Respondents, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 11, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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[s]" 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 Respondents.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondents to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Complainant alleges that the disputed domain names are effectively under the control of a single entity operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 notes that the disputed domain names are being used for websites that display nearly identical content and share a single IP address. Based upon these and other circumstances, the Panel considers it appropriate to treat the disputed domain names as being under the common control of a single person or entity (hereinafter "Respondent"). See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Qiu Xiaofeng / Matthew Gough / Isobel Bond Majaus / Louis Brennan / Jake Perkins Wittappona / Spencer Pope Afteptips, FA 2065636 (Forum Nov. 3, 2023) (treating domain names as being under common control in similar circumstances); Guess? IP Holder L.P. & Guess?, Inc. v. Olivia Patterson / Jamie Richards Apegavers / Maya Bartlett / Rebecca Abbott Minsou / Jade Finch / John Price Boacred / Freddie Robson / Qiu Xiaofeng, FA 2051651 (Forum Aug. 9, 2023) (same); Guess? IP Holder L.P. & Guess?, Inc. v. Toni Tringolo / Web Commerce Communications Ltd. / Client Care, FA 2047356 (Forum July 1, 2023) (same).

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a retailer and its wholly owned intellectual property holding company subsidiary. Complainant has marketed and licensed apparel and other products under the GUESS mark since 1981, accumulating billions of dollars of sales. Complainant owns numerous trademark registrations for GUESS and related marks, including registrations for GUESS in standard character form in the United States, the European Union, and other jurisdictions throughout the world. Complainant also asserts common law rights in the mark, and claims that it is among the most famous and distinctive marks in retailing.

 

Respondent is the registrant of the disputed domain names <guesscolombia.org>, <guessoutletcanada.org>, <guessportugal.biz>, <guessisrael.biz>, <guessireland.com>, <guessuk.biz>, <guessdk.net>, and <guessfrancesac.com>. The domain names are being used for nearly identical websites that display Complainant's mark and offer for sale what Complainant alleges to be counterfeit versions of its products. Complainant states that Respondent is not commonly known by the disputed domain names, is not an authorized vendor or licensee of Complainant, and is not authorized to use Complainant's GUESS mark.

 

Complainant contends on the above grounds that each of the disputed domain names is confusingly similar to its GUESS mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

 

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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

Each of the disputed domain names <guesscolombia.org>, <guessoutletcanada.org>, <guessportugal.biz>, <guessisrael.biz>, <guessireland.com>, <guessuk.biz>, <guessdk.net>, and <guessfrancesac.com> incorporates Complainant's registered GUESS trademark, adding in each instance a geographic name or abbreviation, a generic term, or some combination thereof, and appending ".com" or another top-level domain. Such additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Qiu Xiaofeng et al., FA 2065636, supra (finding confusing similarity in similar circumstances); Guess? IP Holder L.P. & Guess?, Inc. v. Olivia Patterson et al., FA 2051651, supra (same); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd. / Zimmer Karolin / Thorsten BRAUN, FA 2051654 (Forum Aug. 1, 2023) (same); Guess? IP Holder L.P. & Guess?, Inc. v. Web Commerce Communications Ltd. / Client Care, FA 2051652 (Forum Aug. 1, 2023) (same); Guess? IP Holder L.P. & Guess?, Inc. v. Toni Tringolo et al., FA 2047356, supra (same); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2008840 (Forum Sept. 22, 2022) (same). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

Each of the disputed domain names incorporates Complainant's registered mark without authorization, and their sole apparent use is for websites that pass off as Complainant and offer for sale unauthorized and allegedly counterfeit versions of Complainant's products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Qiu Xiaofeng et al., FA 2065636, supra (finding lack of rights or interests in similar circumstances); Guess? IP Holder L.P. & Guess?, Inc. v. Olivia Patterson et al., FA 2051651, supra (same); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2008840, supra (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent used multiple aliases to register several domain names that incorporate Complainant's famous mark and is using them for websites that pass off as Complainant and offer for sale unauthorized and likely counterfeit versions of Complainant's products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. Qiu Xiaofeng et al., FA 2065636, supra (finding bad faith registration and use in similar circumstances); Guess? IP Holder L.P. & Guess?, Inc. v. Olivia Patterson et al., FA 2051651, supra (same); Guess? IP Holder L.P. & Guess?, Inc. v. Client Care / Web Commerce Communications Ltd., FA 2008840, supra (same). The Panel finds that the disputed domain names were registered and are being used in bad faith.

 

DECISION

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

 

Accordingly, it is Ordered that the <guesscolombia.org>, <guessoutletcanada.org>, <guessportugal.biz>, <guessisrael.biz>, <guessireland.com>, <guessuk.biz>, <guessdk.net> and <guessfrancesac.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: January 13, 2024