Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN
Claim Number: FA1503001610067
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is LI FANGLIN (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <2015-guess-hk.com>, registered with CRAZY DOMAINS FZ-LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2015; the Forum received payment on March 17, 2015.
On March 22, 2015, CRAZY DOMAINS FZ-LLC confirmed by e-mail to the Forum that the <2015-guess-hk.com> domain name is registered with CRAZY DOMAINS FZ-LLC and that Respondent is the current registrant of the name. CRAZY DOMAINS FZ-LLC has verified that Respondent is bound by the CRAZY DOMAINS FZ-LLC 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 March 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2015 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@2015-guess-hk.com. Also on March 25, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <2015-guess-hk.com> domain name is confusingly similar to Complainant’s GUESS mark.
2. Respondent does not have any rights or legitimate interests in the <2015-guess-hk.com> domain name.
3. Respondent registered and uses the <2015-guess-hk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Complainant provides that Guess? IP Holder L.P. and Guess?, Inc. are collectively known as “Guess?”. The Panel notes that Complainant’s contact information lists the identical address and e-mail for both Guess? IP Holder L.P. and Guess?, Inc.
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.”).
The Panel finds that Complainant has sufficiently established a link between the Complainants, and the Panel will treat them as a single entity in this proceeding, collectively referring to them as “Complainant.”
Complainant owns the GUESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,433,022, registered March 17, 1987) and with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 793,772, registered Nov. 21, 1995). Complainant uses the GUESS mark in connection with its line of men’s and women’s apparel and related goods, including women’s handbags, watches, and shoes.
Respondent registered the <2015-guess-hk.com> domain name on January 12, 2015, and uses it to sell Complainant’s products, using images copied directly from Complainant’s 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 Panel finds that Complainant’s USPTO and SAIC registrations are sufficient to establish Complainant’s rights in the GUESS mark pursuant to Policy ¶ 4(a)(i). Prior Panels have agreed that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to 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)); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <2015-guess-hk.com> domain name includes Compalinant’s GUESS mark and merely adds “2015,” the hyphens, the letters “hk,” and the gTLD “.com.” Previous panels have found confusing similarity when a respondent adds a set of numbers to a complainants mark. See Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark). Similarly, the addition of hyphens and letters, such as “hk,” have been found to insufficiently distinguish a disputed domain name from an otherwise incorporated mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). The necessary addition of a gTLD does not negate confusing similarity. 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). Accordingly, the Panel finds that the <2015-guess-hk.com> domain name is confusingly similar to Complainant’s GUESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts that Respondent has no rights or legitimate interests in the <2015-guess-hk.com> domain name, and is not commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “LI FANGLIN ” as the registrant of record. Complainant states that Respondent does not have permission to use Complainant’s trademark. Thus, the Panel finds that Respondent lacks rights to the disputed domain name under Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <2015-guess-hk.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that Respondent uses the <2015-guess-hk.com> domain name to misdirect and divert consumers searching for Complainant and its goods to a website displaying Complainant’s famous trademark and products. The Panel notes that Respondent is using the disputed domain name to sell Complainant’s products, using images that have been copied directly from Complainant’s website. Previous panels have found that diverting Internet users to sell a complainant’s products is not a bona fide offering of goods or services, or for a legitimate noncommercial or fair use pursuant to Policies ¶ 4(c)(i) or ¶ 4(c)(iii). See A 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). The Panel thus finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and use of the disputed domain name is disruptive to Complainant’s business because it misleads Complainant’s consumers, and diverts them to Respondent’s website. Previous panels have concluded that this use amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”). The Panel finds that Respondent’s use of the disputed domain name is disruptive and bad faith under Policy ¶ 4(b)(iii).
Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Previous panels have found bad faith registration and use where a respondent uses a mark confusingly similar to a complainant’s to sell complainant’s products. 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). As Respondent likely seeks commercial gain through the use of Complainant’s registered mark, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Complainant contends that Respondent had knowledge of Complainant’s rights in the GUESS mark when it registered the disputed domain name. The Panel notes that Respondent uses Complainant’s GUESS mark and photographs from Complainant’s website. The Panel thus finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, which is further evidence of bad faith registration under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds that 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 <2015-guess-hk.com> domain name be TTRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 25, 2015
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