Guess? IP Holder L.P. and Guess?, Inc. v. dajiangjun / dajiangjun
Claim Number: FA1305001499299
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 dajiangjun / dajiangjun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessoutlett.com>, registered with Xin Net Technology Corporation.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2013; the National Arbitration Forum received payment on May 10, 2013. The Complaint was submitted in both Chinese and English.
On May 13, 2013, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <guessoutlett.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 17, 2013, the Forum served the Chinese Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of June 6, 2013 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@guessoutlett.com. Also on May 17, 2013, the Chinese 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
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 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 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 National Arbitration 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 Forum’s Supplemental Rule 1(e) allows 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 (Nat. Arb. 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 (Nat. Arb. Forum Dec. 28, 2003), two complainants were treated 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 (Nat. Arb. 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.
Under the circumstances, the Panel finds that there is a sufficient nexus or link between the Complainants, and therefore they will be treated as a single entity in this proceeding.
A. Complainant
a) Complainant contends that it has rights in the GUESS, used in connection with clothing. Complainant is the owner of registrations for the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,271,896 registered March 27, 1984) as well as with the State Administration for Industry and Commerce of the People’s Republic of China (“SAIC”) (Reg. No. 293,554 registered July 20, 1987). See Complainant’s Exhibit D.
b) The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <guessoutlett.com> domain name contains the GUESS mark in its entirety, along with the descriptive term “outlett” and the generic top-level domain (“gTLD”) “.com.” The fact that the descriptive term “outlett” includes an additional “t” does not alter the fact that the disputed domain name is confusingly similar.
c) Respondent has not been commonly known by the <guessoutlett.com> domain name. The WHOIS information for the disputed domain name lists “djiangjun” as the domain name registrant. Complainant’s have not given Respondent permission to use the GUESS mark.
d) Respondent is not making a bona fide offering a goods or services or a legitimate noncommercial or fair use. Respondent is using the disputed domain name to sell goods that directly compete with Complainant’s products. The resolving website offers what Complainant considers to be counterfeit GUESS items. The resolving website also prominently displays Complainant’s mark at the top of the website.
e) Respondent is engaged in typosquatting.
f) Because Respondent is selling counterfeit GUESS goods through the disputed domain name, Respondent is disrupting Complainant’s business.
g) Respondent utilizes the disputed domain name that is confusingly similar to Complainant’s mark for commercial gain. The resolving website offers goods that are in direct competition with Complainant’s goods.
h) Respondent has attempted to pass itself off as Complainant by imitating Complainant’s website.
i) Respondent had actual and constructive knowledge of Complainant’s mark. Complainant points to Respondent’s explicit use of the GUESS mark as evidence of this knowledge.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GUESS mark. Respondent’s domain name is confusingly similar to Complainant’s GUESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <guessoutlett.com> domain name, and that Respondent registered and uses the domain name 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 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(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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
Complainant contends that it has rights in the GUESS, used in connection with clothing. Complainant alleges it is the owner of registrations for the GUESS mark with the USPTO (Reg. No. 1,271,896 registered March 27, 1984) as well as with the SAIC (Reg. No. 293,554 registered July 20, 1987). Therefore, the Panel finds that Complainant has rights in the GUESS mark. See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Complainant next alleges that the disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <guessoutlett.com> domain name contains the GUESS mark in its entirety, along with the descriptive term “outlett” and the generic top-level domain (“gTLD”) “.com.” Complainant asserts that the fact that the descriptive term “outlett” includes an additional “t” does not alter the fact that the disputed domain name is confusingly similar. First, the Panel finds that the addition of the descriptive term “outlett,” regardless its incorrect spelling, does not sufficiently distinguish the disputed domain name from Complainant’s marks. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Next, the Panel finds that the addition of the gTLD “.com” is irrelevant to confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <guessoutlett.com> domain name is confusingly similar to Complainant’s GUESS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <guessoutlett.com> domain name. Complainant urges that Respondent has not been commonly known by the <guessoutlett.com> domain name. Complainant notes that the WHOIS information for the disputed domain name lists “djiangjun” as the domain name registrant. Further, Complainant has not given Respondent permission to use the GUESS mark. The WHOIS information may be used as one factor in determining whether Respondent is commonly known by the disputed domain name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Moreover, Complainant has not given Respondent permission to use the GUESS mark. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that the Respondent is not commonly known by the <guessoutlett.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant states that Respondent is using the disputed domain name to sell goods that directly compete with Complainant’s products. The resolving website offers what Complainant considers to be counterfeit GUESS items. The resolving website also prominently displays Complainant’s mark at the top of the website. The Panel finds that Respondent’s sale of counterfeit goods is not a bona fide offering of goods or services. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Further, the Panel finds that Respondent’s sale of competing goods is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that because Respondent is selling counterfeit GUESS goods through the disputed domain name, Respondent is disrupting Complainant’s business. Such conduct has been considered to be a bad faith registration and use. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). Therefore, the Panel finds that Respondent’s use of the <guessoutlett.com> domain name constitutes a disruption to Complainants business under Policy ¶ 4(b)(iii) and thus a bad faith registration and use.
Complainant asserts that Respondent utilizes the disputed domain name that is confusingly similar to Complainant’s mark for commercial gain. Further, Complainant contends that Respondent has attempted to pass itself off as Complainant by imitating Complainant’s website. The resolving website offers goods that are in direct competition with Complainant’s goods. Such conduct has been considered to be a bad faith registration and use. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark). Therefore, the Panel finds that Respondent intentionally attempted to obtain a commercial advantage and thus registered the <guessoutlett.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent had actual knowledge of Complainant’s mark. Complainant points to Respondent’s explicit use of the GUESS mark as evidence of this knowledge. The Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
The Panel finds 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 <guessoutlett.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 19, 2013
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