Guess? IP Holder L.P. and Guess?, Inc. v. Christopher Murphy and Tiagra Investments
Claim Number: FA1403001550205
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 Christopher Murphy and Tiagra Investments (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess.clothing>, registered with ENOM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 21, 2014; the National Arbitration Forum received payment March 21, 2014.
On March 25, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <guess.clothing> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2014, 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.clothing. Also on March 26, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
a) Complainant has rights in the GUESS mark, which it has used for some 30 years in connection with highly successful lines of clothing and related goods. Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) for the GUESS mark (e.g., Reg. No. 1,433,022 registered Mar. 17, 1987). See Complainant’s Exhibit D. Complainant also owns the registrations with IP Australia (“IPA”) for the GUESS mark (e.g., Reg. No. 431,431 registered Aug. 8, 1985). See Complainant’s Exhibit E.
b) The <guess.clothing> domain name is identical to or confusingly similar to Complainant’s GUESS mark. The disputed domain name features Complainant’s entire GUESS mark and the top-level domain (“TLD”) “.clothing.”
c) Respondent has no rights or legitimate interests in the <guess.clothing> domain name.
a. Respondent is not commonly known by the <guess.clothing> domain name. Complainant has not licensed Respondent to use the GUESS mark and Respondent has no relationship with Complainant that would entitle Respondent to use the GUESS mark. Further, the WHOIS record reflects that Respondent is known as “Christopher Murphy and Tiagra Investments.”
b. Respondent’s use of the <guess.clothing> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent uses the <guess.clothing> domain name to redirect consumers to a commercial parked page displaying a multitude of unrelated pay-per-click advertisement links at the <searchezy.com> domain name.
d) Respondent registered and is using the <guess.clothing> domain name in bad faith.
a. Respondent demonstrates its bad faith in accordance with Policy ¶ 4(b)(iv). Respondent registered the disputed domain name with the intention of creating a purported association with Complainant and the GUESS mark, and Respondent resolves the <guess.clothing> domain name to a website, which displays links unrelated to Complainant. A clear association exists between the GUESS mark and the “.clothing” TLD that further strengthens this likelihood of confusion.
Respondent failed to file a Response in this proceeding however, the Panel notes that the <guess.clothing> domain name was registered February 2, 2014, some 27 years after Complainant’s trademark registration date.
Complainant established that it has rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is identical to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name based on Complainant’s protected mark.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings two Complainants filed the Complaint. 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 Panel notes that Complainants do not address the connection between them. However, the Complaint does list the Complainants together under the “Complainants’ Information” section of the Complaint and provides a single address and e-mail for both of them together. Complainant goes on to state: “Complainants, Guess ? IP Holder L.P. and Guess?, Inc. (collectively, ‘Complainants” or “Guess?”), own the world-famous Guess brand.” From this statement, the Panel infers that the Complainants are connected in their shared interests and joint relationship regarding ownership of the GUESS family of marks. Complainants state as well that they have many licensees. From this allegation, the Panel finds reasonable grounds to allow for the dispute to proceed, finding a substantive connection between the two parties.
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 (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), 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 (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. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. 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.”).
This Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and treat the two as a single entity in this proceeding. The Panel does not need additional documentation from the parties before making the determination called for by the record, pursuant to ICANN Rule 12. Throughout the Decision, Complainants are collectively referred to as “Complainant.”
Identical to or Confusingly Similar
Complainant asserts that it has rights in the GUESS mark, which it has used for some 30 years in connection with highly successful lines of clothing and related goods. Complainant demonstrates that it is the owner of registrations with the USPTO for the GUESS mark (e.g., Reg. No. 1,433,022 registered Mar. 17, 1987). See Complainant’s Exhibit D. Complainant also provides evidence that it owns the registrations with Australia’s IPA for the GUESS mark (e.g., Reg. No. 431,431 registered Aug. 8, 1985). See Complainant’s Exhibit E. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. Therefore, the Panel finds that Complainant has rights in the GUESS mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <guess.clothing> domain name is identical to or confusingly similar to Complainant’s GUESS mark. Complainant argues that the disputed domain name merely features Complainant’s entire GUESS mark and the descriptive TLD “.clothing.” Panels have found that the addition of a TLD is irrelevant to an analysis under Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <guess.clothing> domain name is identical to Complainant’s GUESS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and 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), and then the burden of proof shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 contends that Respondent has no rights to or legitimate interests in the <guess.clothing> domain name. Complainant argues that Respondent is not commonly known by the <guess.clothing> domain name. Complainant claims that it has not licensed Respondent to use the GUESS mark and that Respondent has no relationship with Complainant that would entitle Respondent to use the GUESS mark. Further, Complainant notes that the WHOIS record reflects that Respondent is known as “Christopher Murphy and Tiagra Investments.” Therefore, the Panel finds that Respondent is not commonly known by the <guess.clothing> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant next alleges that Respondent’s use of the <guess.clothing> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant demonstrates that Respondent uses the <guess.clothing> domain name to redirect consumers to a commercial parked page displaying a multitude of unrelated pay-per-click advertisement links. See Complainant’s Exhibit F. The Panel notes that these unrelated links are listed under headings such as “Cash Advance,” “Insurance,” and “Cheap Airfare.” Id. The panel in Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002), held that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name. Therefore, the Panel finds that Respondent’s use of the <guess.clothing> domain name is 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant states that Respondent registered and is using the <guess.clothing> domain name in bad faith. Complainant argues that Respondent demonstrates its bad faith in accordance with Policy ¶ 4(b)(iv). Complainant explains that Respondent registered the disputed domain name with the intention of creating a purported association with Complainant and the GUESS mark, yet Respondent resolves the <guess.clothing> domain name to a website that displays links unrelated to Complainant. In Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007), the panel held that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv). Similarly, this Panel finds that Respondent’s registration and use of the <guess.clothing> domain name supports findings of bad faith in accordance with Policy ¶ 4(b)(iv).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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.clothing> domain name be TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 5, 2014.
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