Guess? IP Holder L.P. and Guess?, Inc. v. ZhouRunFa and ZhouRunFa
Claim Number: FA1412001593509
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 ZhouRunFa and ZhouRunFa (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessoutlet.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR).
The undersigned certifies that she 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 December 4, 2014; the National Arbitration Forum received payment December 4, 2014.
On December 7, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) confirmed by e-mail to the National Arbitration Forum that the <guessoutlet.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) 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 December 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@guessoutlet.org. Also on December 10, 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 January 5, 2015, 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 serve 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:
Complainant claims that it sells jeans and other fashion goods under the GUESS mark. The GUESS mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). The <guessoutlet.org> domain name is confusingly similar to the mark in that it affixes a gTLD and the retail-specific term “outlet.”
Respondent has no rights or legitimate interests in the <guessoutlet.org> domain name. Respondent has never been commonly known as this <guessoutlet.org> domain name. Further, Respondent uses the <guessoutlet.org> domain name to sell counterfeit GUESS goods.
Respondent registered and is using the <guessoutlet.org> domain name in bad faith. Respondent’s sale of counterfeit merchandise on the domain name’s website illustrates that Respondent has the intent to disrupt Complainant’s business. Further, the sale of these competing goods indicates that Respondent plans to profit on the likelihood Internet users will associate this domain name with Complainant. Respondent had actual knowledge of Complainant’s rights in the GUESS mark prior to registering this infringing domain name.
Respondent makes the following response in this Proceeding:
Respondent did not submit a response.
The Panel notes that Respondent registered the <guessoutlet.org> domain name March 19, 2014.
Complainant established its rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights to or legitimate interests in the mark and disputed domain name.
The disputed domain name is confusingly similar to 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.”).
Identical or Confusingly Similar:
Complainant claims that it sells jeans and other fashion goods under the GUESS mark. Complainant argues that the GUESS mark is registered with the USPTO (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). This Panel finds that USPTO registration satisfies Complainant’s burden to show evidence of Complainant’s Policy ¶ 4(a)(i) rights in the mark, irrespective of Respondent’s residence. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Complainant claims that the <guessoutlet.org> domain name is confusingly similar to the mark in that it affixes a gTLD and the retail-specific term “outlet.” The Panel agrees that the term “outlet” as added here enhances the confusing similarity of the domain name. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel finds that Policy ¶ 4(a)(i) confusing similarity is established; the only other addition is the irrelevant “.org” gTLD. 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must 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 such 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 urges that Respondent is not commonly known by the <guessoutlet.org> domain name. The Panel notes that “ZhouRunFa” is listed as the registrant of record for this disputed domain name. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel agreed that when nothing in any relevant record supported a finding that the respondent was known as a given domain name, then Respondent could not satisfy Policy ¶ 4(c)(ii). This Panel agrees; Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <guessoutlet.org> domain name to sell counterfeit GUESS goods. The Panel notes that the website at the domain name uses Complainant’s own marks extensively, giving the appearance that it is an official tat it is a GUESS website; conduct the Panel makes an inference is done to gain increased sales of counterfeit goods. See Compl., at Attached Ex. E. This Panel also finds that such use is not a bona fide offering of goods under Policy ¶ 4(c)(i), and that it is not a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).”).
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 claims that Respondent’s sale of counterfeit merchandise on the domain name’s website illustrates that Respondent intends to disrupt Complainant’s business. The Panel notes that the domain name is being used to sell competing counterfeit goods under the GUESS mark. See Compl., at Attached Ex. E. The Panel agrees that such use is clearly disruptive toward Complainant by using its GUESS mark without permission, and such use supports findings of Policy ¶ 4(b)(iii) bad faith. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Complainant goes on to claim that the sale of these competing goods indicates that Respondent plans to profit on the likelihood Internet users will associate this domain name with Complainant. In H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel agreed that the resale of counterfeit goods created a Policy ¶ 4(b)(iv) likelihood of confusion as Internet users could mistakenly buy the fake goods, expecting to have products from the true mark’s products. Here the Panel agrees that Respondent registered and is using the domain name in Policy ¶ 4(b)(iv) bad faith by selling counterfeit goods.
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the GUESS mark prior to registering this infringing domain name. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, actual knowledge to constitute evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used 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 the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <guessoutlet.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 19, 2015.
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