DECISION

 

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

Claim Number: FA2401002080897

 

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 Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <guessonlinemalaysia.com>, <guesssingaporesg.com>, <guessoutletsusa.com>, <guessstorephilippines.com>, <guessindiasonline.com>, <guess-outletuk.com>, <guessstoreosterreich.com> and <guessindias.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 25, 2024; Forum received payment on January 25, 2024.

 

On January 29, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <guessonlinemalaysia.com>, <guesssingaporesg.com>, <guessoutletsusa.com>, <guessstorephilippines.com>, <guessindiasonline.com>, <guess-outletuk.com>, <guessstoreosterreich.com> and <guessindias.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE 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").

 

On January 31, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 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@guessonlinemalaysia.com, postmaster@guesssingaporesg.com, postmaster@guessoutletsusa.com, postmaster@guessstorephilippines.com, postmaster@guessindiasonline.com, postmaster@guess-outletuk.com, postmaster@guessstoreosterreich.com, and postmaster@guessindias.com. Also on January 31, 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 21, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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

The relevant rules governing multiple complainants are UDRP Rule 3(a) and Forum's Supplemental Rule 1(e). UDRP Rule 3(a) states, "Any 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.

 

There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Guess? IP Holder L.P. is wholly owned by Guess?, Inc. The Panel therefore finds that there is a sufficient link between the named Complainants, and elects to treat them as one Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <guessonlinemalaysia.com>, <guesssingaporesg.com>, <guessoutletsusa.com>, <guessstorephilippines.com>, <guessindiasonline.com>, <guess-outletuk.com>, <guessstoreosterreich.com> and <guessindias.com> domain names (the "disputed domain names") are confusingly similar to Complainant's GUESS? mark.

 

2.       Respondent does not have any rights or legitimate interests in the disputed domain names.

 

3.       Respondent registered and uses the disputed domain names in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant is the well-known GUESS? retailer, and holds a registration for the GUESS? mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,271,896, registered Mar. 27, 1984).

 

Respondent registered the <guessonlinemalaysia.com>, <guesssingaporesg.com>, <guessoutletsusa.com>, <guessstorephilippines.com>, <guessindiasonline.com>, <guess-outletuk.com>, <guessstoreosterreich.com> and <guessindias.com> domain names between July, 2023, and December, 2023. Respondent uses the disputed domain names to sell counterfeit versions of Complainant's goods.

 

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 Panel finds that Complainant has rights in the GUESS? mark through registration with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, "There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant's rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant's attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).")

 

Respondent's <guessonlinemalaysia.com>, <guesssingaporesg.com>, <guessoutletsusa.com>, <guessstorephilippines.com>, <guessindiasonline.com>, <guess-outletuk.com>, <guessstoreosterreich.com> and <guessindias.com> domain names all contain the dominant portion of Complainant's GUESS? mark and add geographic and descriptive terms and the ".com" gTLD. These changes do not sufficiently distinguish a disputed domain name from a 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 Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.") The Panel therefore finds that the disputed domain names are confusingly similar to Complainant's GUESS? mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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 has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the domain names. Complainant has not given Respondent permission to use its GUESS? mark in the disputed domain names. The WHOIS identifies "Web Commerce Communications Limited / Client Care" as the registrant.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). 

 

Complainant argues that Respondent does not use the disputed domain names for a bona fide offering of goods or service or a legitimate noncommercial or fair use by using it to offer counterfeit products. Using a disputed domain name to sell unauthorized products is not a bona fide offering of goods or service or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or 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 services, 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). Complainant provides screenshots of the websites at the disputed domain names, featuring counterfeit versions of Complainant's goods and Complainant's marks and images. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant claims that Respondent registered and uses the <guessonlinemalaysia.com>, <guesssingaporesg.com>, <guessoutletsusa.com>, <guessstorephilippines.com>, <guessindiasonline.com>, <guess-outletuk.com>, <guessstoreosterreich.com> and <guessindias.com> domain names in bad faith to pass off as Complainant for Respondent's commercial gain. Using a disputed domain name to pass off as a complainant for commercial benefit evinces bad faith under Policy ¶ 4(b)(iv).  See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.") The Panel thus finds bad faith under Policy ¶ 4(b)(iv).  

 

Complainant claims that Respondent registered the disputed domain names with knowledge of Complainant's rights in the GUESS? mark based on the fame of the mark and Respondent's use of the mark to pass off as Complainant and sell counterfeit goods. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.").

 

The Panel finds that Complainant has satisfied 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 <guessonlinemalaysia.com>, <guesssingaporesg.com>, <guessoutletsusa.com>, <guessstorephilippines.com>, <guessindiasonline.com>, <guess-outletuk.com>, <guessstoreosterreich.com> and <guessindias.com> domain names be TRANSFERRED from Respondent.

 

 

 

Sandra J. Franklin, Panelist

Dated: February 23, 2024