Guess? IP Holder L.P. and Guess?, Inc. v. Francisco Ferreiro
Claim Number: FA1806001792032
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 Francisco Ferreiro (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess.science>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Piotr Nowaczyk as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2018; the Forum received payment on June 15, 2018.
On June 18, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <guess.science> domain name is registered with NameSilo, LLC; and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 June 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2018 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.science. Also on June 22, 2018, 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.
On July 30, 2018, Respondent submitted seven (7) exhibits but did not provide an actual response.
On August 2, 2018, Complainant filed the Additional Submission.
On August 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Piotr Nowaczyk as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Deficient Response
Although the Respondent’s submission was not in compliance with ICANN Rule 5, the Panel, at its discretion, accepts and considers this deficient Response, see Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants: : Guess? IP Holder L.P. and Guess?, Inc. Complainant Guess? IP Holder L.P. is a Delaware limited partnership that is effectively wholly owned by Complainant Guess?, Inc. The former assigned the latter the trademarks that Complainants rely upon in this proceedings.
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.” The 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, see eh. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006).
Complainants demonstrated a link involving an affiliation and assignment of trademarks which the Panel finds sufficient. Therefore, the Panel will treat them all as a single entity for the purpose of proceedings.
A. Complainant
Complainant is the owner of the world-famous GUESS brand, which it has used for over thirty (30) years in connection with a highly successful line of men’s and women’s apparel and related goods. Complainant has rights in the GUESS mark through its trademark registrations with the United States Patent and Trademark Office (e.g., Reg. No. 1,433,022, registered March 17, 1987).
Respondent’s <guess.science> domain name is confusingly similar to Complainant’s GUESS mark as Respondent merely adds a “.science” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in <guess.science> domain name. Respondent is not permitted or authorized to use Complainant’s GUESS mark and is not commonly known by the disputed domain name. Additionally, Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to host an interactive website with a virus page that locks users’ computers, sells fraudulent tech services, and solicits users’ personal information.
Respondent registered and uses the <guess.science> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name which redirects users to a virus webpage in order to fraudulently extracts users’ personal information. Furthermore, Respondent’s registration of a confusingly similar domain name that is obviously connected to a particular trademark suggests opportunistic bad faith.
B. Respondent
Respondent registered and owns various domain names that have the potential to be developed or be used by a company offering services in the emerging field of predictive analytics. Respondent registered the <guess.science> domain name as part of its business as the domain name is comprised of entirely generic terms: “guess” and “science.” Id .
Respondent was served a Complaint on June 22, 2018 and immediately visited the <guess.science> domain name’s resolving website. Respondent found no evidence of malicious activity referenced in the Complaint. Rather, Respondent discovered that this was a “glitch” and the malware originated from the <cerigrav.stream> domain name.
Respondent has not utilized the disputed domain name in order to mislead or divert users from Complainant’s business. Complainant nor its counsel have attempted to contact Respondent at any time prior to filing the Complaint.
C. Additional Submissions
Respondent’s statements and undescribed evidence do not rebut Complainant’s prima facie case under the Policy. Respondent’s <guess.science> domain name is confusingly similar to Complainant’s GUESS mark as the phrase “GUESS SCIENCE” does not have any accepted or known meaning by itself. Respondent appears to suggest the “.science” gTLD should be taken into consideration; however, this is in direct contradiction from UDRP precedent.
In view of Respondent’s allegation that the malware may have been previously present on Mr. Nelson’s computer, Mr. Nelson again contacted the IT department in his firm on June 27, 2018, to request a scan of his computer to test the veracity of Respondent’s claims. A member of the IT department then conducted a diagnostic scan of Mr. Nelson’s computer, and did not find any indication that Mr. Nelson’s computer was infected by malware or that it would have been infected by malware prior to his visiting the website at the subject domain name.
Respondent also made modifications to the disputed domain name after being served with the Complaint which is evidenced by relevant WHOIS information.
In summation, Respondent’s disputed domain name does redirect to a website with malware and such use is not indicative of rights or legitimate interests.
Complainant is a multinational retailer that designs and manufactures handbags, activewear, jewelry, swimwear, jeans and other apparel. Guess? IP Holding L.P. is a wholly owned subsidiary of Guess?, Inc., and is the owner of numerous marks registered with the United States Patent and Trademark Office, including the GUESS mark (e.g., Reg. No. 1,433,022, registered March 17, 1987).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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.
Complainant claims to have rights in the GUESS mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its USPTO registrations for the GUESS mark (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). See Compl. Ex. D. Therefore, the Panel finds that Complainant has sufficiently established rights in the GUESS mark per Policy ¶ 4(a)(i).
Complainant claims that the disputed domain name incorporates the entire GUESS mark while adding only the “.science” gTLD. This may not sufficiently differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Thus, the Panel agrees with Complainant and finds Respondent’s disputed domain name is identical to Complainant’s GUESS mark per Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts Respondent has no rights or legitimate interests in the <guess.science> domain name. Specifically, Complainant alleges Respondent was not permitted or authorized to use Complainant’s GUESS mark and is not commonly known by the disputed domain name. Relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Complainant provides a copy of the WHOIS information which identifies Respondent as “Francisco Ferreiro,” and there is no evidence to suggest Respondent was authorized to use Complainant’s mark. See Compl. Ex. A.
Additionally, Complainant alleges Respondent is not using the <guess.science> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues Respondent uses the disputed domain name to host an interactive website with a virus page that locks users’ computers, attempts to sell fraudulent tech services, and solicits users’ personal information. Use of a disputed domain name to distribute malicious software and/or phish for users’ personal information may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the disputed domain name’s resolving website to support its contention. See Compl. Ex. G. Moreover, to rebut Respondent’s allegations as to the source of the malware presented at the screenshot, Complainant submitted a declaration of an IT specialist who has scanned that computer and did not find any indication of a malware prior to day when Complainant’s counsel entered the disputed domain name. See Compl. Ex. L.
The above is not undermined by a screenshot of the disputed domain name’s resolving to a regular website which was submitted by Respondent. Since Complainant proves that the disputed domain name was modified by Respondent after he received the Complainant, Respondent had a chance to remove the malicious software.
Therefore, the Panel finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
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.science> domain name be TRANSFERRED from Respondent to Complainant
Piotr Nowaczyk, Panelist
Dated: August 20, 2018
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