DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. Sandra Cecilia Salazar Zazueta

Claim Number: FA1905001843776

 

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 Sandra Cecilia Salazar Zazueta (“Respondent”), Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <grupoguessamexico.com>, registered with 1&1 IONOS SE.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 17, 2019; the Forum received payment on May 17, 2019.

 

On May 20, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <grupoguessamexico.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name.  1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 May 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2019 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@grupoguessamexico.com.  Also on May 28, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In the instant proceedings, 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.”  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.”  

 

The Complainants in this matter are Guess? IP Holder L.P. and Guess?, Inc. Complainant contends that Guess? IP Holder L.P. is a limited partnership effectively wholly owned by Guess?, Inc. to hold and license some, but not all, Guess trademark assets. Complainant asserts the activities of Guess? IP Holder L.P. are ultimately controlled by Guess?, Inc. through various other wholly owned entities. In this matter, Complainants claim they are related entities that constitute a single source of goods and services. See Compl. Ex. F.

 

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.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them as a single entity in this proceeding.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Guess? IP Holder L.P. and Guess?, Inc., referred to collectively as Complainant, own the GUESS brand used in connection with men’s and women’s apparel for over 30 years. Complainant has rights in the GUESS mark through its registration with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 1,271,896 registered on Mar. 27, 1984). See Compl. Ex. E. Respondent’s <grupoguessamexico.com> domain name is confusingly similar to Complainant’s mark because it incorporates the GUESS mark in its entirety adding only the generic or descriptive terms “grupo” and “a” along with a geographic modifier “mexico” and a generic top-level domain (“gTLD”).

 

2.    Respondent lacks rights and legitimate interests in the <grupoguessamexico.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a parked page that offers pay-per-click links to clothing accessories that directly compete with Complainant.

 

3.    Respondent registered and uses the <grupoguessamexico.com> domain name in bad faith because Respondent intentionally attempts to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion as to the source, sponsorship, affiliation , or endorsement of Respondent’s website. Specifically, Respondent uses the disputed domain name to host pay-per-click links to third party websites that direct compete with Complainant. Respondent’s use of Complainant’s well known mark in connection with a confusingly similar domain name is further evidence of bad faith. Finally, Respondent had actual and constructive knowledge of Complainant’s mark.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <grupoguessamexico.com> domain name is confusingly similar to Complainant’s GUESS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <grupoguessamexico.com> domain name.

 

3.    Respondent registered or used the <grupoguessamexico.com> domain name in bad faith.

 

DISCUSSION

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.

 

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

Complainant has rights in the GUESS mark based upon its registration of the mark with the USTPO. Registration with the USTPO generally establishes a complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“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 registration of the mark with the USTPO (e.g., Reg. No. 1,271,896 registered on Mar. 27, 1984). See Compl. Ex. E.  Accordingly, the Panel agrees and finds that Complainant has established rights in the GUESS mark for the purposes of Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent’s <grupoguessamexico.com> domain name is confusingly similar because Respondent incorporates the GUESS mark in its entirety, adds generic or descriptive and geographic terms, and a gTLD. The addition of generic or descriptive and geographic terms may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See 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.”). Furthermore, the addition of a gTLD is irrelevant to the analysis of confusing similarity. See 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.”). Here, Complainant argues that the terms “grupo” and “a” are generic because they mean “group” and “to” in Spanish. Complainant further argues that the addition of “mexico” is a geographic term that fails to distinguish the domain name from Complainant’s mark. Finally, Complainant argues that the addition of the “.com” gTLD is irrelevant to the confusing similarity analysis. Therefore, the Panel finds that the <grupoguessamexico.com> domain name is confusingly similar to Complainant’s mark 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 name 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”).

 

Complainant argues that Respondent lacks rights and legitimate interests in the <grupoguessamexico.com> domain name because Respondent is not authorized or permitted to use Complainant’s GUESS mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies the Respondent as “Sandra Cecilia Salazar Zazueta” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Amend. Compl. Ex. A. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <grupoguessamexico.com> domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent fails to use the <grupoguessamexico.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain name resolves to a parked pay which offers pay-per-click links to clothing accessories that directly compete with Complainant. A respondent using a disputed domain name as a parked page to provide click through links may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant argues that Respondent uses the disputed domain name to feature pay-per-click links to third parties that offer goods and directly competitive products. Complainant provides a screenshot of the disputed domain name’s resolving webpage which features links to third party websites. See Compl. Ex H. Therefore, the Panel finds that Respondent makes no bona fide offerings or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses <grupoguessamexico.com> domain name in bad faith because Respondent intentionally attempts to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, Respondent uses the disputed domain name to host pay-per-click links to third party websites that directly compete with Complainant. Using a disputed domain name to host pay-per-click links may be evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel recalls that Complaint provides a screenshot of the disputed domain name’s resolving webpage that displays third party links to men and women’s clothing and accessories. See Compl. Ex H. Therefore, the Panel finds bad faith under Policy ¶ 4(b)(iv).

 

Next, Complainant argues Respondent registered and uses the <grupoguessamexico.com> domain name in bad faith because the GUESS mark is so well known. Such use may evince bad faith under Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). Complainant argues that Respondent use of the trademark alone shows bad faith. The Panel finds the evidence sufficient and finds bad faith under Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s GUESS mark. Constructive knowledge is insufficient to a finding of bad faith but actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent had actual or constructive knowledge of Complainant’s mark through Respondent’s use of the well-known mark in registering the disputed domain name. The Panel finds the evidence sufficient and finds 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 <grupoguessamexico.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  July 2, 2019