Guess? IP Holder L.P. and Guess?, Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1411001589762
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 Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessco.com>, registered with Internet.bs Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2014; the National Arbitration Forum received payment on November 12, 2014.
On November 20, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <guessco.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@guessco.com. Also on November 20, 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 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns the GUESS mark through trademark registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). Complainant uses the GUESS mark for men’s, women’s, and children’s clothing and accessories. The <guessco.com> domain name is confusingly similar to the GUESS mark. The subject domain name features the entire GUESS mark, and adds the term “co,” an abbreviation for company, plus the non distinctive generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <guessco.com> name, as demonstrated by the WHOIS information and Respondent’s lack of authorization to use the mark. Respondent is not making a bona fide offering of goods or services at the disputed domain name, nor a legitimate noncommercial or fair use therein. Instead, Respondent uses the disputed domain name to sell goods directly competing with Complainant’s own GUESS brand goods. Respondent’s offerings include many counterfeit goods bearing the GUESS mark. Respondent passes itself off as Complainant by employing Complainant’s model photographs on the subject website.
Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s goods amounts to Policy ¶ 4(b)(iii) bad faith. Respondent’s efforts to pass itself off as Complainant in furtherance of this counterfeiting scheme evinces Policy ¶ 4(b)(iv) bad faith. Lastly, Respondent’s efforts to impersonate Complainant in appearance, branding, and clothes, demonstrate Respondent’s actual knowledge of Complainant at the time of domain name registration, which has been deemed bad faith pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of men’s, women’s, and children’s clothing and accessories.
2. Complainant owns the GUESS mark used in its business through trademark registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987).
3. The disputed domain name was registered on November 6, 2007.
4. Respondent uses the disputed domain name to sell goods directly competing with Complainant’s own GUESS brand goods, including counterfeit goods bearing the GUESS mark. Respondent passes itself off as Complainant by employing Complainant’s model photographs on the subject website.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the GUESS mark for men’s, women’s, and children’s clothing and accessories. Complainant claims to own the GUESS mark through trademark registration with the USPTO (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). Prior panels have found USTPO registration sufficient to demonstrate rights pursuant to Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”). Accordingly, the Panel determines that Complainant’s registrations of the GUESS mark with the USPTO satisfies the criteria that demonstrate Policy ¶ 4(a)(i) rights in the mark.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GUESS mark. Complainant argues that the <guessco.com> domain name is confusingly similar to the GUESS mark. Complainant contends the subject domain name features the entire GUESS mark, adds the term “co,” an abbreviation for company, plus the non distinctive gTLD “.com.” Prior panels have determined that the addition of a generic term or abbreviation to an incorporated mark does not dispel confusing similarity. See Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”). Further, panels have consistently held that the inclusion of a gTLD is irrelevant to the 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). As such, the Panel determines the <guessco.com> domain name is confusingly similar to the GUESS mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GUESS mark and to use it in its domain name and has simply added the generic word “co” for “ company” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the corporate status of Complainant;
(b) Respondent registered the disputed domain name on November 6, 2007:
(c) Respondent uses the disputed domain name to sell goods directly competing with Complainant’s own GUESS brand goods, including counterfeit goods bearing the GUESS mark. Respondent also passes itself off as Complainant by employing Complainant’s model photographs on the subject website.
(d) Respondent registered and used the disputed domain name without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. In so arguing, Complainant urges that Respondent is not commonly known by the <guessco.com> name, as demonstrated by the WHOIS information and Respondent’s lack of authorization to use the mark. The Panel sees that the WHOIS record identifies “Ryan G Foo / PPA Media Services” as registrant of record. The Panel agrees that there is no basis to find Respondent commonly known by the <guessco.com> name per Policy ¶ 4(c)(ii);
(f) Next, Complainant argues that Respondent is not making a bona fide offering of goods or services at the disputed domain name, nor a legitimate noncommercial or fair use therein. Instead, Complainant contends that Respondent uses the disputed domain name to sell goods directly competing with Complainant’s own GUESS brand goods. See Compl., at Attached Ex. E. Complainant notes that Respondent’s offerings include many counterfeit goods bearing the GUESS mark. Complainant further explains that Respondent passes itself off as Complainant by employing Complainant’s model photographs on the subject website. See id. As Respondent uses the disputed domain name to sell counterfeit goods under the auspices of the GUESS brand, the Panel finds no bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See 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); Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s goods amounts to Policy ¶ 4(b)(iii) bad faith. The Panel recalls that Complainant has submitted a screen shot detailing Respondent’s counterfeiting scheme at attached Exhibit E. Prior panels have determined that such counterfeiting activity amounts to Policy ¶ 4(b)(iii) bad faith. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). Accordingly, the Panel finds evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent’s efforts to pass itself off as Complainant in furtherance of this counterfeiting scheme evinces Policy ¶ 4(b)(iv) bad faith. The Panel recalls that the disputed domain name resolves to a website featuring Complainant’s logo, mark, and models. See Compl., at Attached Ex. E. Prior panels have determined that a respondent’s use of a subject domain name to pass itself off as the Complainant in order to sell unauthorized or counterfeit goods falls within the realm of bad faith described in Policy ¶ 4(b)(iv). See 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); Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel agrees that Policy ¶ 4(b)(iv) is established in this case.
Thirdly, Complainant argues that Respondent’s efforts to impersonate Complainant in appearance, branding, and clothes, demonstrate Respondent’s actual knowledge of Complainant at the time of domain name registration, which has been deemed bad faith pursuant to Policy ¶ 4(a)(iii). See Compl., at Attached Ex. E. Prior panels have inferred actual knowledge and found bad faith under Policy ¶ 4(a)(iii) where the respondent used the disputed domain name to promote counterfeit goods bearing the complainant’s name and mark. Notably, in Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013), the panel wrote, “While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.” Here, the Panel determines that Respondent’s use of the disputed domain name to sell counterfeit GUESS products under the guise of Complainant’s mark, logo, and imagery, provides sufficient basis to deduce Respondent’s actual knowledge of Complainant at the time of domain name registration, and therefore find evidence of Policy ¶ 4(a)(iii) bad faith.
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and use of the disputed domain name using the GUESS mark, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessco.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 16, 2014
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