DECISION

 

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

Claim Number: FA2402002083067

 

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

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <guess-mexico-mx.com> and <guessfrance-fr.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.

 

Héctor Ariel Manoff as Panelist.

 

PROCEDURAL HISTORY

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

 

On February 18, 2024, Alibaba.Com Singapore E-Commerce Private Limited confirmed by e-mail to Forum that the <guess-mexico-mx.com> and <guessfrance-fr.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 February 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@guess-mexico-mx.com and postmaster@guessfrance-fr.com. Also on February 20, 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 March 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Héctor Ariel Manoff 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 COMPAINANTS

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."

 

Prior Panels have accepted multiple complainants in a case involving also two related companies which were of part of the Guess group.

 

"Guess "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)."  Guess? IP Holder L.P. and Guess?, Inc. v. Kathrin Gerste / Martin Engel / Ulrike Schreiner / Juliane Scherer / Barbara Blau, FA 2080822 (Forum Feb. 23, 2024).

 

This Panel agrees to accept multiple complainants.

 

PARTIES' CONTENTIONS

A. Complainant

1- Complainants own the world-famous GUESS brand which they have used for over 40 years in connection with their highly successful lines of men's and women's apparel and related goods.

2- Apart from strong common law trademark rights, Complainant owns

numerous Trademark Registrations for their GUESS Mark throughout the world.

3-The disputed Domain Names include the word mark GUESS in its entirety along with a generic top-level domain (gTLD), along with the country code for France, "FR," and "Mexico," and the country code for Mexico, "MX,", countries where Complainants do business.

4- Domain Names are confusingly similar to Complainants' GUESS mark.

5- Respondent has no rights or legitimate interests in the Domain Names.

6- Complainants are not associated with Respondent and have not granted Respondent permission to use the GUESS Marks.

7- Respondent's true identity is not disclosed, but Respondent is not commonly known as "guess," "guess-mexico-mx.com," or "guessfrance-fr.com".

8- Respondent uses the Domain Names unlawfully to offer for sale counterfeit GUESS branded goods in direct competition with Complainants.

9- Respondent uses the Domain Names for websites featuring Complainants' copyright protected images, which does not constitute a bona fide offering of services.

10- The Domain Names were registered and are used in bad faith since Complainants have used the GUESS Mark for more than 40 years and the Domain Names were registered on December 8, 2023. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainants own trademark GUESS for more than 40 years and the disputed domain names were registered in 2023 and include the word mark GUESS in its entirety along with a generic top-level domain (gTLD and country codes.

 

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

Complainants own the world-famous GUESS brand, which has been used for more than 40 years in connection with men's and women's apparel.

 

Complainants also has an e-commerce website at guess.com since 1985.

GUESS Mark is a famous and distinctive marks which has acquired a valuable goodwill and reputation.

 

In addition, Complainants have several worldwide registrations for GUESS.

Complainants have a sufficient trademark rights and interest in the disputed Domain Name.

 

The disputed Domain Names incorporate Complainants' GUESS word mark in its entirety along with a generic gTLD a hyphen and country codes, which are not a distinguishing feature. (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.").

 

This Panel finds that Complainant has proved trademark rights on GUESS and the disputed domain names are confusingly similar to that trademark.

 

The Panel finds that the Domain Names are identical and confusingly similar to GUESS marks, in which Complainant has rights, 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 names 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").

 

The Panel finds that Respondent is not commonly known by the <guess-mexico-mx.com> and <guessfrance-fr.com> domain names. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). In this case the identity of the Respondent cannot be found in the owner or contact information for the registration of the domain name. Thus, the Panel concludes that the Respondent is not commonly known by the domain names.

 

Complainant has not given authorization to use the GUESS mark or to register any domain name containing the GUESS marks. 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)").

 

This Panel also points out that Respondent is not using the domain names in connection with a legitimate noncommercial use or fair use under Policy 4(c)(iii).

 

According to the evidence provided by Complainant Respondent's use of the GUESS Mark within the Domain Names is not a legitimate use and it misdirects traffic from Complainants to Respondent for the Respondent's benefit. Both domain names resolve to websites entitled "GUESS" which mimic Complainants' own website. This could lead the consumers into confusion with respect to the origin of the goods involved.

 

Therefore, the Panel agrees that Respondent is not commonly known by the disputed domain names and does not have legitimate interest under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

This Panel finds that Complainants have used the GUESS Mark for more than 40 years well before the date on which the domain names were registered (December 8, 2023).

 

In addition, the use on the domain names websites, according to the evidence submitted by Complainant (Exhibit 3), shows bad faith since they include the Complainant's mark and products. See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (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))".

 

This Panel agrees with Complainant that since the disputed domain names are so obviously connected with a well-known trademark, it is clearly the bad faith in registering the domain names.

 

The Panel finds that Respondent uses the domain names to attract, for commercial gain, users to its own website, which is evidence of bad faith registration and use.

 

The Panel determines that Respondent registered and used the disputed domain name 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 <guess-mexico-mx.com> and <guessfrance-fr.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Héctor Ariel Manoff, Panelist

Dated: March 18, 2024