Guess? IP Holder L.P. and Guess?, Inc. v. liansheng / liansheng zhang
Claim Number: FA1210001469432
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is liansheng / liansheng zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessspain.com>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 29, 2012; the National Arbitration Forum received payment on October 29, 2012.
On October 30, 2012, ENOM, INC. confirmed by e-mail to the National Arbitra-tion Forum that the <guessspain.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 31, 2012, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 20, 2012 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, administra-tive, and billing contacts, and to postmaster@guessspain.com. Also on October 31, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 Not-ices, 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 National Arbitration 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 owns the GUESS brand and mark, which it uses in connection with the marketing of its lines of men’s and women’s apparel and related goods.
Complainant also owns and operates the domain names <guess.com> and <guess.ca>.
Complainants holds registrations, on file with the United States Patent and Trademark Office (“USPTO”), for the GUESS trademark (including Reg. No. 1,433,022, registered March 17, 1987).
Respondent registered the <guessspain.com> domain name on March 23, 2012.
That domain name is confusingly similar to Complainant’s GUESS mark.
Respondent has not been commonly known by the disputed domain name, and Complainant has not given Respondent permission to use the GUESS mark.
Respondent is using the disputed domain name to sell counterfeit GUESS goods and other goods directly competing with those of Complainant.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent uses the GUESS mark, as well as numerous GUESS product photo-graphs, on its resolving website to create the misperception that Respondent’s website is operated by or affiliated with Complainant.
Respondent presumably benefits financially from the operation of the website re-solving from the disputed domain name.
Respondent, at the time that it registered the disputed domain name, knew of Complainant’s rights in the GUESS mark.
Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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 submit-ting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registra-tion” 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.”
Because Complainant credibly alleges that its two constituent entities together own the trademark involved in this proceeding, and because this assertion is unopposed by Respondent, we accept this assertion and deem it sufficient to permit us to consider Complainant as a single party for purposes of this pro-ceeding. See Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), where a panel concluded that:
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 part-nership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
Complainant has rights in the GUESS trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately dem-onstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is so without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides (here China). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark from registration in some jurisdiction).
Turning to the central question which arises under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <guessspain.com> domain name is confusingly similar to Complainant’s GUESS trademark. The domain name incorporates the mark in its entirety, merely adding the geographic term “spain” and the gTLD “.com” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similar-ity under the standards of the Policy. See, for example, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of a geographic term, such as “cancun,” to the end of the CHEAPTICKETS mark in creating the <cheapticketscancun.com> domain name did not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
See also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007):
Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
Complainant asserts that Respondent has not been commonly known by the disputed <guessspain.com> domain name, and that it has not given Respondent permission to use the GUESS mark. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “liansheng / lian-sheng zhang,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed do-main name so as to have rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a respondent had not been commonly known by the domain name <cigaraficionada.com> and so had failed to demonstrate that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is using the disputed domain name to sell counterfeit GUESS goods, as well as goods directly competing with those of Complainant, and that Respondent displays on its website the GUESS trademark and GUESS product photographs, all in an effort to create the misperception among Internet users that Respondent’s website is operated by or affiliated with Complainant. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark without authorization to attract Internet users to its website, which offered both that complainant’s products and those of that complainant’s competitors); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that a re-spondent was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent uses Complainant’s GUESS trademark in the contested domain name to misdirect to Respondent’s website Internet users searching for Complainant’s website in order to sell to them counterfeit goods purporting to be those of Complainant, as well as com-peting goods. This use of the disputed domain name disrupts Complainant’s business, and therefore stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-
plainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced from the evidence that Respondent employs the domain name <guessspain.com>, which is confusingly similar to Complainant’s GUESS trademark, to profit from the operation of the website resolving from the domain name in the manner alleged in the Complaint. This is evidence that Respondent has registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell a com-plainant’s products without permission, in the process misleading Internet users by implying that that respondent was affiliated with a UDRP complainant); to the same effect, see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008).
Finally, the record makes clear that Respondent, at the time that it registered the disputed domain name, knew of Complainant and its rights in the GUESS mark. This, too, is proof that Respondent registered the domain name in bad faith. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between a complainant's mark and the content advertised on a respondent's website was obvious, that respondent "must have known about the Complain-ant's mark when it registered the subject domain name").
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <guessspain.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 21, 2012
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