DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. Lorraine Mason / Web Commerce Communications Limited / Client Care

Claim Number: FA2401002078222

 

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. Respondent is Lorraine Mason / Web Commerce Communications Limited / Client Care ("Respondent"), Multiple Locations.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <guessnz.net>, <guessnz.com>, <guessaustraliastore.com> and <guessaustraliaoutlet.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and 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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 8, 2024; Forum received payment on January 8, 2024.

 

On January 9, 2024 and January 10, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and NameCheap, Inc. confirmed by e-mail to Forum that the <guessnz.net>, <guessnz.com>, <guessaustraliastore.com> and <guessaustraliaoutlet.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and NameCheap, Inc. and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and NameCheap, Inc. have verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and NameCheap, Inc. 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 January 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2024 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@guessnz.net, postmaster@guessnz.com, postmaster@guessaustraliastore.com, and postmaster@guessaustraliaoutlet.com. Also on January 12, 2024, 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 February 2, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 ISSUE: MULTIPLE COMPLAINANTS

In this proceeding 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."

 

Complainant Guess? IP Holder L.P. is a holding company concerned with Complainant Guess? Inc.'s intellectual property. Notably, Guess IP Holder L.P. licenses certain Guess? trademarks and corresponding registrations. Guess? IP Holder L.P. is wholly owned and controlled by Guess? Inc. Additionally, there is no objection by Respondent to named Complainants proceeding together as if one. The Panel therefore finds that the two nominal complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they can be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Notwithstanding any differences in the domain registration records for the at-issue domain names the at-issue domain names nevertheless appear to be effectively controlled by the same person or entity. 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."

 

The at-issue domain names are similarly constructed as each domain name consists of Complainant's trademark less its question mark, have added terms, and conclude with the ".com" top-level. All four domain names contain a descriptive geographic term and three conclude with the ".com" top-level domain name and one with the ".com" top-level. Two of the domain names also include suggestive descriptive terms and two of the at-issue domain names show identical content while the remaining two are held passively. Furthermore, Complainant's de facto position that the domain names' registrants should be treated as a single entity is unopposed. Therefore, given the relevant circumstances the Panel elects to treat the at-issue domain names' nominal registrants as a single entity for the purposes of this proceeding.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainants, Guess? IP Holder L.P. and Guess?, Inc. own the world-famous GUESS brand which is used in connection with their highly successful lines of men's and women's apparel and related goods.

 

Complainant asserts rights in the GUESS? mark based upon registration with the United States Patent and Trademark Office ("USPTO") as well as other agencies worldwide.

 

The <guessnz.net>, <guessnz.com>, <guessaustraliastore.com> and <guessaustraliaoutlet.com> domain names are each confusingly similar to Complainant's mark because the at-issue domain names each consist of Complainant's GUESS? mark less its question mark, and include a geographic term and or an additional suggestive term. Each at-issue domain name concludes with the ".net" or ".com" generic top level domain ("gTLD").

 

Respondent lacks rights or legitimate interests in the at-issue domain names. Respondent is not commonly known by the at-issue domain names, nor has Respondent been authorized by Complainant to use the GUESS? mark. Also, Respondent has not used the at-issue domain names in connection with a bona fide offering of goods or services. Instead, Respondent is using the domain names to pass off as Complainant by displaying Complainant's marks and proprietary images on such domain names' related website in order to sell counterfeit goods in direct competition with Complainant.

 

Respondent registered and uses the at-issue domain names in bad faith. Using two of the domain names Respondent is diverting internet users to Respondent's website to sell counterfeit goods in direct competition with Complainant thus disrupting Complainant's business. Moreover, such website features obvious claims and implications which further associate it with the GUESS marks, and reproduces multiple images owned by Complainant. Respondent has created initial interest confusion. Respondent registered the at-issue domain names with opportunistic bad faith. Three of the domain names were registered using a privacy service. Additionally, Respondent had knowledge of Complainant's rights in GUESS? prior to its registration of the at-issue domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant's has rights in the GUESS? mark.

 

Complainant has rights in the GUESS? mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at-issue domain names after Complainant acquired rights in the GUESS? trademark.

 

Respondent collectively uses the at-issue domain names to address a website designed to appear as if it is Complainant's genuine website and there offers counterfeit GUESS? products for sale.

 

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

The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows it has multiple trademark registrations with multiple agencies worldwide for its GUESS? mark, including registrations with the USPTO. Each such registration provides sufficient evidence of Complainant's rights in a mark under Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) ("Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i)."); see also, Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) ("Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.").

 

Respondent's domain names each contain Complainant's GUESS? trademark (less its domain name impermissible question mark) as well as additional descriptive terms. Each domain name concludes with the "net" or ".com" top level domain name. The differences between any of Respondent's at-issue domain names and Complainant's GUESS? trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's <guessnz.net>, <guessnz.com>, <guessaustraliastore.com> and <guessaustraliaoutlet.com> domain names are each confusingly similar to Complainant's GUESS? trademark. 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, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect each at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of any of the at-issue domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

WHOIS information for the at-issue domain names identifies the domain names' registrants as "Lorraine Mason / Web Commerce Communications Limited / Client Care" and the record before the Panel contains no evidence that tends to prove that any nominal Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by either <guessnz.net>, <guessnz.com>, <guessaustraliastore.com> or <guessaustraliaoutlet.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent's confusingly similar domain names address a website that draws from Complainant's official website. Respondent's website purports to offer counterfeit clothing, apparel, and accessories for sale, while displaying Complainant's trademark and copyrighted images owned by Complainant. Respondent's use of the at-issue domain names to pass off in this manner constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(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, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) ("Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant's WATTS brand and displays counterfeit versions of Complainant's products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.").

 

To the extent that any one of the at-issue domain names fails to address an active website such passive holding is also neither indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) ("Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).").

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).

 

Respondent collectively uses the at-issue domain names to address a website displaying Complainant's trademark and copyrighted images. Such website offers counterfeit GUESS? products for sale. Respondent's use of the domain names in this manner is disruptive to Complainant's business and shows Respondent's attempt to attract internet users, confused as to the domain names' sponsorship, to the at-issue domain names and fraudulent online store. Respondent's use of the domain names thus indicates bad faith regarding Respondent's registration and use of the domain names under Policy ¶ 4(b)(iii) and under Policy ¶ 4(b)(iv). See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA1410001587466 (Forum Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent's selling of counterfeit products creates the likelihood of confusion as to the complainant's affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)).

 

To the extent that any one of the at-issue domain names fails to address an active website such passive holding also indicates Respondent's bad faith registration and use under the Policy. See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (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)."). Notably, passive holding of a domain name has been viewed as a disruption to a complainant's business under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant's business by pointing internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the GUESS? trademark when it registered <guessnz.net>, <guessnz.com>, <guessaustraliastore.com> and <guessaustraliaoutlet.com> as domain names. Respondent's actual knowledge is evident from the notoriety of Complainant's trademark and from Respondent's use of the domain names to mimic Complainant's genuine website and offer counterfeit versions of Complainant's GUESS? products for sale. Respondent's registration and use of the confusingly similar domains names with knowledge of Complainant's trademark rights in GUESS? further shows Respondent's bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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 <guessnz.net>, <guessnz.com>, <guessaustraliastore.com> and <guessaustraliaoutlet.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: February 4, 2024