Guess? IP Holder L.P. and Guess?, Inc. v. Semiha Bektas / Guess Global Trading
Claim Number: FA1806001794421
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 Semiha Bektas / Guess Global Trading (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-global.com>, registered with united-domains AG.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2018; the Forum received payment on June 28, 2018.
On July 3, 2018, united-domains AG confirmed by e-mail to the Forum that the <guess-global.com> domain name is registered with united-domains AG and that Respondent is the current registrant of the name. united-domains AG has verified that Respondent is bound by the united-domains AG 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 July 10, 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-global.com. Also on July 10, 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.
A timely Response was received and determined to be complete on July 17, 2018.
On July 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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.
A. Complainant
Complainant contends that it owns and uses a multitude of GUESS trademarks and service marks. The GUESS mark has acquired a valuable goodwill and reputation for more than 30 years, not only in the US but throughout the world. In addition to its strong common law trademarks, Complainant owns numerous trademark registrations for its GUESS Mark throughout the world since 1984.
Complainant contends that the domain name at dispute is identical or confusingly similar to the GUESS mark. The domain at dispute at dispute features Complainant’s entire GUESS mark as the dominant portion of the domain name, and merely adds the generic term “global” to Complainants’ GUESS mark. The term “global” is generic and merely relates to Complainants’ status as a company or corporation with an international presence, and does not distinguish the domain name at dispute from Complainants’ GUESS mark. Likewise, the incorporation of the generic top-level domain (“gTLD”) ”.com” into the subject domain name is irrelevant to the confusingly similar analysis.
Complainant further contends, that Respondent has no rights or legitimate interests in the domain name at dispute. According to Complainant Respondent is not commonly known by the domain name at dispute and has not made any bona fide offering of goods and services at the domain name at dispute. Further, Respondent is not making any legitimate noncommercial or fair use of the subject domain name.
Finally Complainant contends, that Respondent has registered and is using the domain name at dispute in bad faith.
B. Respondent
In its Response dated July 17, 2018 Respondent has declared to waive the domain name at dispute and has agreed to deletion of the domain name.
Preliminary Issue: Foreign Language
The Complaint was filed in English but the language of the registration agreement is German. Respondent was notified in German language. The Response dated July 17, 2018 is also in German language.
Paragraph 11(a) of the Rules stipulates that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel".
Whilst there is a language requirement that is provided for in paragraph 11(a) of the Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593.
Complainant alleges Respondent is conversant and proficient in the English language as the “Respondent’s domain name was registered incorporating the English name corresponding to the Guess mark (which does not have any meaning in German), and the English word ‘global’. . .” See Amend. Compl. p. 2.
Additionally, Complainant argues that it is “not conversant and proficient in the German language.” See Morgan Stanley v. Ian qing tian / Ian qing tian (Forum July 13, 2016) (“Having considered all the matters above, and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.”); see also Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Kleber Amaral da Silva (Forum May 20, 2013) (“The Panel is satisfied that the circumstances in this case justify a departure from the general rule that the proceedings should be in the language of the registration agreement. It is evident that the Respondent is capable of understanding and communicating in English and would not be prejudiced by the proceedings being in the English language.”).
The Panel has duly considered the circumstances of this case and the relevant policy considerations in arriving at its decision that English shall be the language of the proceeding. The Panel notes that Respondent has been notified by the Center in German language. The Respondent has been given a fair opportunity to present its case and has responded with its mentioned email, where he has declared to waive the domain name at dispute. It is quite evident from Respondent's response that he understands the nature of the claim being asserted by Complainant and has chosen to state his position on the matter. Finally Respondent’s correspondence with the Forum was also English language (see Respondent’s e-mail dated July 19, 2018).
Therefore Panel believes that Respondent would not be prejudiced if English is adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto had to be translated into German. In keeping with the Policy aim of facilitating a relatively time and cost-efficient procedure for the resolution of domain name disputes, especially in this case where Respondent has consented to transfer, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding.
Preliminary Issue: Consent to Transfer
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.
The Panel holds that Respondent has declared to waive the domain name at dispute. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead renounces the domain name at dispute, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <guess-global.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
The Panel agrees with this approach and immediately orders the transfer of the disputed domain name.
Having established and determined that the requests of the parties in this case are identical, the Panel concludes without making any findings adverse to the Respondent that relief shall be GRANTED.
Accordingly, it is Ordered that the <guess-global.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda , Panelist
Dated: August 6, 2018
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