Guess?, Inc. v. Aaron Werbner
Claim Number: FA2106001950494
Complainant is Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Aaron Werbner (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smart-luxury.info>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2021; the Forum received payment on June 10, 2021.
On June 11, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <smart-luxury.info> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2021 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@smart-luxury.info. Also on June 16, 2021, 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 July 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Guess?, Inc., designs, markets, and distributes full collections of men’s and women’s apparel. It also grants licenses for the manufacture and distribution of related product categories, including kids & baby apparel, watches, footwear, belts, fragrance, jewelry, swimwear, handbags, small leather goods, eyewear, and leather apparel. Complainant has rights in the trademark SMART LUXURY based upon the registration with the United States Patent and Trademark Office (“USPTO”) in 2011. Respondent’s <smart-luxury.info> domain name, registered on March 25, 2021, is confusingly similar to Complainant’s mark because it incorporates Complainant’s SMART LUXURY mark in its entirety, simply adding the “.info” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <smart-luxury.info> domain name. Respondent is not licensed or authorized to use Complainant’s SMART LUXURY mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s website at the disputed domain name promotes a scam and capitalizes on Complainant’s reputation to redirect Internet users for financial gain.
Respondent registered and uses the <smart-luxury.info> domain name in bad faith. Respondent profits from diverting users from Complainant’s website to Respondent’s website which promotes a scam which fraudulently collects personal information from users. Finally, Respondent had at least constructive knowledge of Complainant’s rights in the SMART LUXURY mark at the time the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the Complainant is unable to prove that the disputed domain name was registered and is being used by Respondent in bad faith to target the asserted trademark.
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 and evidence 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 and supported 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”).
Complainant asserts rights in the SMART LUXURY mark based upon its registration thereof with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Complainant provides a copy of it USPTO registration certificate for the SMART LUXURY. Based upon this evidence, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <smart-luxury.info> domain name is confusingly similar to Complainant’s mark because it incorporates the SMART LUXURY mark in its entirety, simply adding a hyphen and the “.info” gTLD. Addition of punctuation and a gTLD to a mark is most often irrelevant to determining confusing similarity. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). See also Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”) Therefore, the Panel finds that the <smart-luxury.info> domain name is identical or confusingly similar to the SMART LUXURY mark under 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 claims that Respondent does not have rights or legitimate interests in the <smart-luxury.info> domain name since Respondent is not licensed or authorized to use Complainant’s SMART LUXURY mark and is not commonly known by the disputed domain name. Lack of authorization to use a mark paired with unrelated WHOIS information suggests that a respondent does not have rights or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted that it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name identifies the registrant as “Aaron Wernber” and no evidence in the record suggests that Respondent is known otherwise or that it is authorized to use the SMART LUXURY mark. Therefore, the Panel finds no evidence to support a conclusion that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also claims that Respondent doesn’t use the <smart-luxury.info> domain for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof, but instead capitalizes on Complainant’s reputation to redirect Internet users for financial gain. Use of a disputed domain name to redirect Internet traffic for commercial gain is generally not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant claims that Respondent uses Complainant’s entire SMART LUXURY mark to deceive consumers and misdirect them to its own website for commercial gain as part of an online scam known as “1K Daily Profit”. Complainant provides a screenshot of the webpage resolving at the disputed domain and this contains messages such as “Join the 1K Daily Inner Circle”, “Ready to start making profits to tune of 1K daily?”, and “These invitations have only gone out to a select few…” The user is then invited to enter its full name, email address, and phone number into a form and then purchase certain software that is promised to help the user earn profits in excess of US $1,000 per day through automated securities trading. Complainant further submits a third-party report that analyzes and warns users about the 1K Daily Profit scam. Respondent has filed no Response or made any other submission in this case and so it does not rebut Complainant’s prima facie case. The Panel does not find that Respondent capitalizes on Complainant’s reputation to redirect Internet users, for the reasons stated in the next section of this decision. However, it is clear that Respondent is using the disputed domain name to perpetuate a scam for commercial gain. Based upon the evidence before it, the Panel finds no grounds upon which to hold that Respondent is using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or that it is making a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iii).
Whether or not a respondent had knowledge of a complainant’s rights in its asserted mark at the time it registered the disputed domain name is a foundational issue under ¶ 4(a)(iii). Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”)
Complainant argues that Respondent had constructive knowledge of Complainant’s rights in the SMART LUXURY mark at the time the <smart-luxury.info> domain name was registered. UDRP case precedent typically declines to accept the legal theory of constructive notice. James Charles Dickinson, p/k/a “James Charles” and Sister Sister LLC and James Charles LLC v. Khanh Nguye, FA 1950250 (Forum July 6, 2021) (“constructive notice is insufficient to demonstrate bad faith”); UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge."). Even if the Panel were to accept the theory of constructive notice under United States law and based upon Complainant’s submission of its USPTO trademark registration certificate, the WHOIS record indicates that Respondent is located in Israel. There is no evidence that Respondent has a presence in or is subject to the laws of the USA, no Israeli trademark registration certificate has been submitted, and, in any event, the Panel is unable to confirm whether the laws of Israel apply the theory of constructive notice of registered trademarks.
Next, while Complainant asserts that there is “consumer recognition and goodwill associated with Complainant’s SMART LUXURY trademark,” and that this is among the “iconic brands and trademarks owned by Guess?”, it has submitted no evidence that the SMART LUXURY mark has gained a reputation in the marketplace or embodies a high level of trademark distinctiveness. The Complaint discusses the history and reputation of the Guess? name and product line and submits into evidence a screenshot of a page discussing the history of the company. However, there is nothing to support Complainant’s claims that the SMART LUXURY mark is iconic, well-known, or that it has a reputation with the consuming public (while a trademark registration certificate may indicate the existence of rights, it does not attest to the reputation of the mark). It is up to Complainant to present evidence that would support such an assertion. See Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015). For its own edification, the Panel conducted an online search of the words “smart luxury” and found references to the phrase for numerous businesses in a variety of industries but no mention of Complainant or watches in the first several pages of results.
In light of the evidence presented and reviewed, the Panel cannot conclude that Respondent had actual or constructive knowledge of the SMART LUXURY mark or that it otherwise should have had knowledge thereof at the time that it registered the <smart-luxury.info> domain name.
Further, Complainant claims that Respondent registered and uses the <smart-luxury.info> domain name in bad faith since it “seeks to capitalize on the goodwill Guess? has built in that brand and trademark by misdirecting consumers seeking Guess? and its genuine SMART LUXURY products instead.” To be sure, evidence has been presented that Respondent is seeking to profit from the 1K Daily Profit scam promoted at its website and Respondent’s actions do appear to be nefarious. However, Complainant must also meet its burden of proof that Respondent’s actions are specifically targeted at Complainant and its mark rather than conducted in bad faith generally. In light of the above-mentioned shortcomings, the Panel finds insufficient evidence of bad faith registration and use under the various examples set out in Policy ¶ 4(b) or more broadly under Policy ¶ 4(a)(iii).
Finally, the Complaint states that “Given Complainant’s widespread and longstanding use of the SMART LUXURY trademark, it is not possible to conceive of a use of the Domain Name that would not infringe Complainant’s rights.” Despite the fact that the disputed domain name is identical or confusingly similar to the asserted trademark, as noted above the dearth of evidence that Respondent knew of and is targeting the mark falls short for purposes of Policy ¶ 4(a)(iii). About, Inc. v. Neazur Rahaman, FA 1944874 (Forum June 16, 2021) (“Complainant is essentially asking this Panel to presume Respondent registered the disputed domain name with full knowledge of Complainant’s registered mark and reputation targeting Complainant and intending to create a likelihood of confusion with Complainant’s mark.”) As there is no evidence regarding the reputation or uniqueness of Complainant’s mark and no reference to Complainant, watches, or the asserted mark in the content of Respondent’s website, the Panel cannot find it inconceivable that Respondent is using the disputed domain name other than to infringe Complainant’s rights in bad faith under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding the complainant could not establish that the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding). As such, the evidence in this case does not meet the burden of proof required to find bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <smart-luxury.info> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: July 12, 2021
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