Guess? IP Holder L.P. and Guess?, Inc. v. linan / linanbangongshi and hu sugor / sugorguoguo
Claim Number: FA1410001587466
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 linan / linanbangongshi and hu sugor / sugorguoguo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guess-handbags.net> and <guess-inc.net>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2014; the National Arbitration Forum received payment on October 29, 2014.
On October 30, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <guess-handbags.net> and <guess-inc.net> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 November 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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-handbags.net, postmaster@guess-inc.net. Also on November 3, 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 December 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the GUESS mark under Policy 4(a)(i).
a. Complainants, Guess? IP Holder L.P. and Guess?, Inc., own the famous GUESS brand in connection with their lines of men’s and women’s apparel and related goods. Complainants own and operate the domain name <guess.com>, <gbyguess.com>, <marciano.com>, and <guess.ca>.
b. Complainants own and show evidence of several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GUESS mark (e.g., Reg. No. 1,433,022 registered March 17,1987).
c. Respondent’s <guess-handbags.net> and <guess-inc.net> domain names are confusingly similar to Complainant’s GUESS mark.
i. Respondents <guess-handbags.net> domain name adds the descriptive term “handbags” and the generic top-level domain (“gTLD”) “.net” to Complainant’s mark.
ii. Respondent’s <guess-inc.net> domain name adds the descriptive term “inc” and the gTLD “.net” to Complaints mark.
2. Respondent has no rights or legitimate interests in the <guess-handbags.net> or <guess-inc.net> domain names.
a. Respondent is not commonly known by the disputed domain name where the WHOIS information identifies “linan” as the registrant of the <guess-handbags.net> domain name “hu sugor” as the registrant for the <guess-inc.net> domain name. Complainant has not given Respondent permission to use the GUESS mark.
b. Respondent is using the disputed domain name to sell counterfeit GUESS goods and goods directly competing with Complainant’s goods. Respondent uses the GUESS mark at the top of its website as well as numerous GUESS product photographs to further create the appearance and misperception that Respondent’s website is operated by Complainant.
c. Respondent is using the disputed domain name to host commercial websites which sell goods directly competing with Complainant’s goods.
3. Respondent registered and is using the <guess-handbags.net> and <guess-inc.net> domain names in bad faith.
a. Respondent is using Complainant’s GUESS mark and photographs to compete with Complainant and misdirect Internet users searching for Complainant’s website to Respondent’s website.
b. Respondent is using the disputed domain name in connection with a website which offers counterfeit goods and goods in direct competition with Complainant’s goods, for which Respondent presumably benefits.
c. Respondent, at the time that it registered the disputed domain name, had actual knowledge of Complainant’s rights in the GUESS mark.
B. Respondent
Respondent did not submit a Response in this proceeding. Respondent registered the <guess-handbags.net> domain name on November 21, 2013 and the <guess-inc.net> domain name on November 23, 2013.
Preliminary Issue 1: 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 Panel finds from the Complainant’s allegations and exhibits that Complainants, Guess? IP Holder L.P. and Guess?, Inc. have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.
Preliminary Issue 2: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Respondent provides false identification in the WHOIS information. Complainant explains that both entities listed in the WHOIS information share the same registrant owner e-mail address “cysmbt@[redacted].com.” Additionally, Complainant contends that the DNS server information is identical and both domain names resolve to the same website. Complainant also points out that Respondent’s domain names are registered at the same registrar. The Panel agrees that the domain names are commonly controlled by a single Respondent who is using multiple aliases.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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, Guess? IP Holder L.P. and Guess?, Inc., asserts that it owns the famous GUESS brand in connection with its lines of men’s and women’s apparel and related goods. Complainant contends to own and operate the domain names <guess.com>, <gbyguess.com>, <marciano.com>, and <guess.ca>. Complainant asserts that it owns and shows evidence of several trademark registrations with the USPTO for the GUESS mark (e.g., Reg. No. 1,433,022 registered March 17,1987). See Complainant’s Exhibit D. The Panel notes that Respondent appears to reside in China. The Panel finds that even though the Respondent resides in China, Policy ¶ 4(a)(i) requires only that Complainant establishes its rights in the GUESS mark in sufficient enough jurisdiction to show baseline rights. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant’s registrations with the USPTO is sufficient to establish rights in the GUESS mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <guess-handbags.net> and <guess-inc.net> domain names are confusingly similar to Complainant’s GUESS mark under Policy ¶ 4(a)(i). Complainant states that Respondents <guess-handbags.net> domain name adds the descriptive term “handbags” and the gTLD “.net” to Complainant’s mark. Complainant also states that Respondent’s <guess-inc.net> domain name adds the descriptive term “inc” and the gTLD “.net” to Complaints mark. The Panel also notes that Respondent adds a hyphen between Complainant’s GUESS mark and the additional descriptive term. The panel in Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) held, “[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.” Similarly in Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000), the panel found that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen." The Panel additionally notes that adding a descriptive term to a registered mark fails to differentiate a disputed domain name. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel therefore concludes that Respondent’s <guess-handbags.net> and <guess-inc.net> domain names are confusingly similar to Complainant’s GUESS 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), and then the burden 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 argues that Respondent is not commonly known by the disputed domain names where the WHOIS information identifies “linan” as the registrant of the <guess-handbags.net> domain name and “hu sugor” as the registrant for the <guess-inc.net> domain name. Complainant also states that it has not given Respondent permission to use the GUESS mark. The Panel notes that Respondent has not submitted evidence showing that it is commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the <guess-handbags.net> or <guess-inc.net> domain names under 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 argues that Respondent is using the disputed domain names to sell counterfeit GUESS goods and goods directly competing with Complainant’s goods. Complainant contends that Respondent uses the GUESS mark at the top of its website as well as alleged GUESS product photographs to further create the appearance and misperception that Respondent’s website is operated by Complainant. See Complainant’s Exhibit E–F. Complainant further argues that Respondent is using the disputed domain name to host a commercial website which sells goods directly competing with Complainant’s goods. The Panel finds that Respondent’s use of the disputed domain names to sell counterfeit and competing goods is not a bona fide offering of goods under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use 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 the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the 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 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). Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using Complainant’s GUESS mark and copyright-protected photographs to unlawfully misdirect Internet users searching for Complainant’s website to Respondent’s websites selling counterfeit and competing goods. See Complainant’s Exhibit E. The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirect Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use 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 Complainant’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).”).
Complainant contends that Respondent is using the disputed domain names in connection with websites which offer counterfeit goods and goods in direct competition with Complainant’s goods, for which Respondent presumably commercials benefits. See Complainant’s Exhibit E. Complainant argues that it “is well settled that the registration and commercial use of a domain name that is confusingly similar to Complainants’ mark to a website which offers goods in direct competition to Complainants’ goods satisfies the requirements of ¶ 4(b)(iv) of the Policy.” Further, Complainant notes that Respondent’s websites prominently display Complainant’s GUESS mark and Complainant’s copyright protected photographs. The Panel finds that Respondent’s use of the disputed domain names to sell counterfeit and competing goods constitutes attraction for commercial gain 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 the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant asserts that Respondent, at the time that it registered the disputed domain names, had actual knowledge of Complainant’s rights in the GUESS mark. Complainant argues that Respondent’s actual knowledge is evidenced by Respondent’s explicit use of the GUESS mark and photographs on the resolving websites. See Complainant’s Exhibit E. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the GUESS marks and therefore, find bad faith use and registration under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
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-handbags.net> and <guess-inc.net> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 13, 2014
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