Guess? IP Holder L.P. and Guess?, Inc. v. Kerstin EISENHOWER / Andreas BERGMANN / Client Care / Web Commerce Communications Limited
Claim Number: FA2209002011187
Complainant is Guess? IP Holder L.P. and Guess?, Inc., represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California. Respondent is Kerstin EISENHOWER / Andreas BERGMANN / Client Care / Web Commerce Communications Limited, DE.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue, <guessportugalpt.com>, guessargentinaoutlet.com>, <guessslovensko.com>, <guessslovakia.com>, <guessreduceri.com>, <guessbolt.com> and <guess-danmark.com> (“Disputed Domain Names”), are registered with either ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED or NETIM SARL (“Registrars”).
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on September 7, 2022; Forum received payment on September 7, 2022. The Registrars confirmed by e-mail to Forum that the Disputed Domain Names are registered with them and that the respondents are the current registrants of the names. The Registrars verified that the respondents are bound by their registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 15, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2022 by which the respondents could file Responses to the Complaint, via e-mail to all entities and persons listed on the respondents’ registrations as technical, administrative, and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org. Also on September 15, 2022, the Written Notice of the Complaint, notifying the respondents of the e-mail addresses served and the deadline for a Response, was transmitted to the respondents via post and fax, to all entities and persons listed on the respondents’ registrations as technical, administrative and billing contacts.
Having received no response from any of the respondents, Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2022, pursuant to the complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as panelist.
Having reviewed the communications records, the Administrative Panel (“Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (“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 a response from any of the respondents.
The Complaint requests that the Disputed Domain Names be transferred from the respondents to the complainants.
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.” The Panel has identified two procedural issues.
There are two named complainants. Paragraph 3(a) of the Rules states 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.”
The Complaint provides evidence that Guess? IP Holder L.P. is a Delaware limited partnership that is wholly owned by Guess?, Inc.. Absent any challenge from any respondent or other reason not to accept that claim the Panel accepts that the named complainants are sufficiently linked for the purposes of Supplemental Rule 1(e). Accordingly, the Panel treats them as a single entity in this proceeding, hereinafter referring to them together as “Complainant” unless otherwise stated[i].
The Disputed Domain Names are not registered to one holder. Paragraph 3(c) of 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 approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there are reasonable submissions and evidence of a claim to actual control by one person or entity. This Panel follows that approach.
The Complaint, as originally filed, stated:
“Complainant alleges that each of the Disputed Domain Names share one Respondent per Supplement Rule 1(d). In support of this proposition, attached to this Complaint, screenshots for each of the Domain Names show the same infringing content (attached at Exhibit 3).”
This statement was deleted in the Amended Complaint.
The Panel finds, as a matter of principle, that it should properly consider Complainant’s submissions as those presented in the Amended Complaint. Accordingly, there are no submissions in relation to Rule 3(c).
However, the Panel considers that the same result would follow even if the original Complaint was relevant. The Forum's Supplemental Rule 1(d)(i) states that:
A Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Rule 4(c) states:
Any arguments alleging Respondent aliases must be included in the Complaint for Panel consideration.
(i) … .
(ii) If the Panel determines that insufficient evidence is presented to link the alleged aliases, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel; no portion of the filing fee will be refunded.
Support for the proposition that the Disputed Domain Names share a common owner is said to be found in Exhibit 3. That exhibit shows resolving webpages from only six of the seven Disputed Domain Names. Of the six shown, not all are the same. The Panel would have found this material to be insufficient evidence to link the alleged aliases.
In the result, the Panel must determine which respondent to proceed against and is then required to dismiss the Complaint in relation to the domain names not owned by the chosen respondent. The Panel observes that the named respondent, Web Commerce Communications Limited, is the holder of five of the seven Disputed Domain Names, being:
<guessbolt.com>. (“Relevant Domain Names”)
Taking the position most favourable to Complainant, the Panel determines that the Administrative Proceedings should continue against Web Commerce Communications Limited (hereinafter, “Respondent”) in respect of the Relevant Domain Names. The Complaint is dismissed with respect to
<guess-danmark.com> and <guessportugalpt.com> as reflected in the Decision, below.
Complainant asserts trademark rights in GUESS and submits that the Relevant Domain Names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the Relevant Domain Names.
Complainant alleges that Respondent registered and used the Relevant Domain Names in bad faith.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant conducts an international business selling clothing and fashion accessories by reference to the trademark, GUESS, which is the subject of, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 1,433, 022, registered March 17, 1987;
2. the Relevant Domain Names were all created in 2022 and resolve to webpages which offer for sale clothing and use the trademark; and
3. there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Complainant therefore has rights in GUESS since it provides proof of its registration of that trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the Relevant Domain Names with the trademark, the gTLD “.com” can in each case be disregarded as trivial. Thereafter, the Relevant Domain Names take the trademark to which they add one of the country names, “Argentina” or “Slovakia”/ “Slovensko”, and/or the terms, “outlet”, or “reduceri”, or “bolt”.
So far as relevant, the Complaint states that:
‘… the Domain Names include the use of geographic terms … which exacerbates the likelihood of confusion since Complainants do business within the geographic locations incorporated into the Domain Names and enjoy a global reputation. The Domain Names <guessargentinaoutlet.com> and <geussreduceri.com> include the additional descriptive terms “outlet,” and “reduceri,” (meaning discounts), which both are merely descriptive of elements of Complainants' business models (e.g., Complainants' clothing products and accessories are sold at a discount through outlets, among other types of retail establishments). Each of the resulting Domain Names are confusingly similar to Complainants’ GUESS mark.’
The Panel agrees that the addition of country names is of no distinctive value[iii]. So, too, the addition of commonly understood descriptive words generally does nothing to distinguish a domain name from a trademark[iv]. In that regard the word, “outlet”, does nothing to avoid confusion and the trademark remains the recognizable part of <guessargentinaoutlet.com>. Further, although the Complaint does not state in which language the word “reduceri” has the meaning of “discounts” in English, the Panel assumes it to be Romanian and accepts the submission that it, too, is non-distinctive when combined with the trademark. Finally, there are no submissions in respect of the domain name, <guessbolt.com>, or the term, “bolt”. The term has a common, dictionary, meaning in English – disconnected in every sense with the trademark and Complainant’s business – and so, absent submissions as to any other meaning that might be attributed to it, the Panel finds that the simple combination of the two, ordinary, English language words “guess” and “bolt” is so arbitrary as to overshadow the trademark significance of the word, “guess”.
The Panel finds the domain names <guessargentinaoutlet.com>; <guessslovensko.com>; <guessslovakia.com> and <guessreduceri.com> domain to be confusingly similar to the trademark, but finds that the domain name <guessbolt.com> is not confusingly similar to the trademark. It follows that the Complaint fails in relation to the <guessbolt.com> domain name[v].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to <guessargentinaoutlet.com>; <guessslovensko.com>; <guessslovakia.com> and <guessreduceri.com>
(“Remaining Domain Names”).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the Remaining Domain Names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[vi].
The name of the underlying domain name holder, as disclosed by the Registrar, not provide any indication that Respondent might be commonly known by any of the Remaining Domain Names.
There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
Complainant provides screenshots of the resolving websites which are said to display counterfeit goods and use product and model images belonging to Complainant.
Whether or not the goods are counterfeit makes no difference since the Panel finds in either case that Respondent has no rights or legitimate interests in the Remaining Domain Names. Clearly the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under the Policy[vii]. Alternatively, the trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods[viii].
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of the Remaining Domain Names.
Complainant must prove on the balance of probabilities both that the Remaining Domain Names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving websites exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the names to attract, for commercial gain, internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of that website by implying to internet users that they will reach a site either operated by Complainant or someone affiliated with Complainant[ix].
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy in respect to the <guessargentinaoutlet.com>; <guessslovensko.com>; <guessslovakia.com> and <guessreduceri.com> domain names, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that those domain names be TRANSFERRED from Respondent to complainants as joint tenants.
Having failed to establish at least one of the three elements required under the ICANN Policy in respect to the <guessbolt.com> domain name, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
For reasons given earlier, the Panel concludes that the Complaint be DISMISSED in respect of the <guess-danmark.com> and <guessportugalpt.com> domain names. Accordingly, it is Ordered that those domain names also REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: October 17, 2022
[i] See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006).
[ii] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[iii] See, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”;
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.")).
[iv] See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) finding 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; The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶4(a)(i).”).
[v] See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] See, for example, 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.”).
[viii] See, for example, 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, which were either counterfeit products or legitimate products of complainant being resold without authorization.
[ix] See, for example, H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) determining that selling 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).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page