Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2206002001502
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 Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2022; the Forum received payment on June 23, 2022.
On June 27, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2022 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-peru.com, postmaster@tiendaguesscolombia.com, postmaster@guess-ecuador.com. Also on June 29, 2022, 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 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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. 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 in 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.
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Complainant Guess? IP Holder L.P. is a Delaware limited partnership that is wholly owned by Complainant Guess?, Inc. The Panel finds that this is a sufficient nexus between the Complainants, and elects to treat them as a single entity in this proceeding, collectively referred to as “Complainant.”
A. Complainant
1. Respondent’s <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names are confusingly similar to Complainant’s GUESS mark.
2. Respondent does not have any rights or legitimate interests in the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names.
3. Respondent registered and uses the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant is a well-known apparel company. Complainant holds registrations for the GUESS mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered on March 17, 1987).
Respondent registered the <guess-peru.com> domain name on May 9, 2022; the <tiendaguesscolombia.com> domain name on May 7, 2022; and the <guess-ecuador.com> domain name on April 8, 2022; Respondent uses these domain names (the “disputed domain names”) to sell counterfeit GUESS goods.
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”).
The Panel finds that Complainant has rights in the GUESS mark through its registration with multiple trademark agencies, including the USPTO. See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”)
Respondent’s <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names use the GUESS mark and add the geographic terms “Peru,” “Colombia,” and “Ecuador,” and “tienda” which translates to “store” in Spanish, along with a hyphen, and the “.com” gTLD. These changes do not sufficiently distinguish the disputed domain names from Complainant’s mark. See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”); see also Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names are confusingly similar to Complainant’s GUESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 has no rights or legitimate interests in the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names, as Respondent is not commonly known by the domain names, and is not authorized to use them. The WHOIS information identifies Respondent as “Web Commerce Communications Limited.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant also contends that Respondent is not using the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses them to divert users to its website. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert internet users does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant provides screenshots of the disputed domain names’ resolving websites, which display Complainant’s mark, photos, and products. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent is using the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names to sell counterfeit items. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to sell counterfeit versions of a complainant’s products also does not qualify as a bona fide offer or a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Complainant provides screenshots of the resolving websites, showing that they offer counterfeit GUESS goods. The Panel finds that this is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names in bad faith because Respondent disrupts Complainant’s business by selling counterfeit items. Using a disputed domain name to sell counterfeit versions of complainant’s products is a disruption of its business and thus evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”) Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent registered and uses the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names in bad faith by diverting internet users for commercial gain. Using a disputed domain name to divert users for a respondent’s commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). The Panel thus finds further bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent registered the <guess-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names with knowledge of Complainant’s rights in the GUESS mark, due to Complainant’s longstanding use of the GUESS mark. The Panel agrees, noting that Respondent uses the disputed domain names to sell counterfeit GUESS goods, and finds that this also constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(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-peru.com>, <tiendaguesscolombia.com>, and <guess-ecuador.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 26, 2022
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