Guess? IP Holder L.P. and Guess?, Inc. v. kesi mai / kesimai
Claim Number: FA1503001610068
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 kesi mai / kesimai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guesscollectionfemme.com>, <soldesguess2014.com>, <soldesguess-sac.com>, <soldesguess-montre.com>, <soldes-guess2014.com>, <soldes-guess-sac.com>, <soldes-guess-montres.com>, <soldes-guess-montre.com>, <soldeguess-montre.com>, <soldeguess-2015.com>, <montreguesssolde.com>, <guesssoldes-2015.com> and <guesspascher2015.com>, registered with Xin Net Technology Corporation.
The domain names at issue are <soldesguessmontre.com>, <soldesguessfemme.com>, and <montreguesspascher.com>, registered with Bizcn.Com, Inc.
The domain name at issue is <montreguesssoldes.com>, registered with Xin 35 Technology Co., Ltd.
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 Forum electronically on March 17, 2015; the Forum received payment on March 17, 2015. The Complaint was received in both Chinese and English.
On March 18, 2015, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <guesscollectionfemme.com>, <soldesguess2014.com>, <soldesguess-sac.com>, <soldesguess-montre.com>, <soldes-guess2014.com>, <soldes-guess-sac.com>, <soldes-guess-montres.com>, <soldes-guess-montre.com>, <soldeguess-montre.com>, <soldeguess-2015.com>, <montreguesssolde.com>, <guesssoldes-2015.com> and <guesspascher2015.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 18, 2015, Bizcn.Com, Inc. confirmed by e-mail to the Forum that the
<soldesguessmontre.com>, <soldesguessfemme.com>, and <montreguesspascher.com> domain names are registered with Bizcn.Com, Inc. and that Respondent is the current registrant of the names. Bizcn.Com, Inc. has verified that Respondent is bound by the Bizcn.Com, Inc. 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 23, 2015, 35 Technology Co., Ltd. confirmed by e-mail to the Forum that the <montreguesssoldes.com> domain name is registered with 35 Technology Co., Ltd. and that Respondent is the current registrant of the name. 35 Technology Co., Ltd. has verified that Respondent is bound by the 35 Technology Co., Ltd. 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 31, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 20, 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@guesscollectionfemme.com, postmaster@soldesguessmontre.com, postmaster@soldesguessfemme.com, postmaster@soldesguess2014.com, postmaster@soldesguess-sac.com, postmaster@soldesguess-montre.com, postmaster@soldes-guess2014.com, postmaster@soldes-guess-sac.com, postmaster@soldes-guess-montres.com, postmaster@soldes-guess-montre.com, postmaster@soldeguess-montre.com, postmaster@soldeguess-2015.com, postmaster@montreguesssoldes.com, postmaster@montreguesssolde.com, postmaster@montreguesspascher.com, postmaster@guesssoldes-2015.com, postmaster@guesspascher2015.com. Also on March 31, 2015, the Chinese language 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 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
(i) Complainant owns the GUESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered March 17, 1987) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 293,554, registered July 20, 1987). Complainant uses the GUESS mark in connection with their line of men’s and women’s apparel and related goods, including women’s handbags, watches, and shoes. The <guesscollectionfemme.com>, <soldesguessmontre.com>, <soldesguessfemme.com>, <soldesguess2014.com>, <soldesguess-sac.com>, <soldesguess-montre.com>, <soldes-guess2014.com>, <soldes-guess-sac.com>, <soldes-guess-montres.com>, <soldes-guess-montre.com>, <soldeguess-montre.com>, <soldeguess-2015.com>, <montreguesssoldes.com>, <montreguesssolde.com>, <montreguesspascher.com>, <guesssoldes-2015.com> and <guesspascher2015.com> domain names are confusingly similar to the GUESS mark. The disputed domain names include the GUESS mark in full, add any combination of the generic or descriptive terms or numbers “soldes,” “solde,” “montres,” “montre,” “femme,” “pas cher,” “sac,” “2014,” “2015,” and “collection,” to Complainants’ GUESS mark, adds hyphens, and adds the generic top-level domain (“gTLD”) “.com” to each domain name.
(ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. Further, Complainants have never licensed Respondent to use Complainants’ trademark. Respondent’s lack of rights or legitimate interests in the <guesscollectionfemme.com>, <soldesguessmontre.com>, <soldesguessfemme.com>, <soldesguess2014.com>, <soldesguess-sac.com>, <soldesguess-montre.com>, <soldes-guess2014.com>, <soldes-guess-sac.com>, <soldes-guess-montres.com>, <soldes-guess-montre.com>, <soldeguess-montre.com>, <soldeguess-2015.com>, <montreguesssoldes.com>, <montreguesssolde.com>, <montreguesspascher.com>, <guesssoldes-2015.com> and <guesspascher2015.com> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the disputed domain names to sell Complainant’s products, many of them counterfeit goods. See Compl., at Attached Ex. E. Further, the <soldeguess-2015.com>, <montreguesssoldes.com> and <guesspascher2015.com> domain names are currently being inactively held by Respondent, which is evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Id.
(iii) Respondent has engaged in bad faith registration and use of the disputed domain names. Respondent’s registration and use of the disputed domain names disrupt Complainants’ business by misleading Complainants’ consumers. Additionally, Respondent uses the domain names to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainants. Further, Respondent had knowledge of Complainants’ rights in the GUESS mark when it registered the disputed domain names. Finally, Respondent is passively holding several of the disputed domain names, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response. The Panel notes that
the <guesscollectionfemme.com> domain name was registered January 30, 2015.
The <soldesguessmontre.com> domain name was registered October 9, 2015.
The <soldesguessfemme.com> domain name was registered October 9, 2014.
The <soldesguess2014.com> domain name was registered December 1, 2014.
The <soldesguess-sac.com> domain name was registered November 29, 2014.
The <soldesguess-montre.com> domain name was registered January 23, 2015.
The <soldes-guess2014.com> domain name was registered March 1, 2015.
The <soldes-guess-sac.com> domain name was registered November 17, 2014.
The <soldes-guess-montres.com> domain name was registered January 10, 2015.
The <soldes-guess-montre.com> domain name was registered February 14, 2015.
The <soldeguess-montre.com> domain name was registered March 3, 2015.
The <soldeguess-2015.com> domain name was registered September 10, 2014.
The <montreguesssoldes.com> domain name was registered February 5, 2015.
The <montreguesssolde.com> domain name was registered February 5, 2015.
The <montreguesspascher.com> domain name was registered October 5, 2014.
The <guesssoldes-2015.com> domain name was registered January 13, 2015.
The <guesspascher2015.com> domain name was registered March 3, 2015.
(1) Multiple Complainants
In the instant proceedings, there are two Complainants: Guess? IP Holder L.P. and Guess?, Inc.. 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 that Complainants Guess? IP Holder L.P. and Guess?, Inc. collectively own the world-famous GUESS brand, which it has used for over 30 years in connection with their highly successful lines of men’s and women’s apparel and related goods.
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.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, the Panel treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
(2) Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 contends that it owns the GUESS mark through its registration with the USPTO (e.g., Reg. No. 1,433,022, registered March 17, 1987) and with China’s SAIC (e.g., Reg. No. 293,554, registered July 20, 1987). Complainant states that it 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. Prior panels have concluded 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)). Accordingly, the Panel finds that Complainant’s USPTO and SAIC registrations are sufficient to establish rights in the GUESS mark under Policy ¶ 4(a)(i).
Complainant asserts that the <guesscollectionfemme.com>, <soldesguessmontre.com>, <soldesguessfemme.com>, <soldesguess2014.com>, <soldesguess-sac.com>, <soldesguess-montre.com>, <soldes-guess2014.com>, <soldes-guess-sac.com>, <soldes-guess-montres.com>, <soldes-guess-montre.com>, <soldeguess-montre.com>, <soldeguess-2015.com>, <montreguesssoldes.com>, <montreguesssolde.com>, <montreguesspascher.com>, <guesssoldes-2015.com> and <guesspascher2015.com> domain names are confusingly similar to the GUESS mark. The disputed domain names include the GUESS mark in full, add any combination of the generic or descriptive terms or numbers “soldes,” “solde,” “montres,” “montre,” “femme,” “pas cher,” “sac,” “2014,” “2015,” and “collection,” to Complainants’ GUESS mark, add hyphens, and each disputed domain name contains the gTLD “.com.” Complainant alleges that the chosen terms refer to Complainant’s products, which increases the likelihood of consumer confusion. Previous panels have agreed that the addition of descriptive words that relate to a complainant’s business, along with a gTLD, does not negate any confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also 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). Further, previous panels have found that the addition of a punctuation mark, such as a hyphen, does not sufficiently differentiate a disputed domain name from a registered 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).”). As such, the Panel determines that each of the disputed domain names is confusingly similar to the Complainant’s 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 has no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. The Panel notes that the WHOIS information for the disputed domain name lists “kesi mai / kesimai” as the registrant of records. See Compl., at Attached Ex. A. Further, Complainant states that it has never licensed Respondent to use the GUESS trademark. As Respondent has not provided evidence to the contrary, the Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain names 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 alleges that Respondent’s lack of rights or legitimate interests in the <guesscollectionfemme.com>, <soldesguessmontre.com>, <soldesguessfemme.com>, <soldesguess2014.com>, <soldesguess-sac.com>, <soldesguess-montre.com>, <soldes-guess2014.com>, <soldes-guess-sac.com>, <soldes-guess-montres.com>, <soldes-guess-montre.com>, <soldeguess-montre.com>, <soldeguess-2015.com>, <montreguesssoldes.com>, <montreguesssolde.com>, <montreguesspascher.com>, <guesssoldes-2015.com> and <guesspascher2015.com> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain names to sell Complainant’s products, many of them counterfeit goods. See Compl., at Attached Ex. E. Past panels have found that a respondent’s use of a confusingly similar domain name to sell counterfeit versions of a complainant’s product is not a bona fide offering of goods or services, or for a 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).”). The Panel thus concludes that Respondent’s use of the disputed domain names to sell counterfeit versions of Complainant’s products does not convey rights or legitimate interests in a domain name under Policy ¶ ¶ 4(c)(i) or 4(c)(iii).
Further, Complainant argues that the <soldeguess-2015.com>, <montreguesssoldes.com> and <guesspascher2015.com> domain names are currently being inactively held by Respondent, which is evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Compl., at Attached Ex. E. Previous panels have found that inactively holding a disputed domain name does not give rise to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Thus, the Panel finds that Respondent further lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and use of the disputed domain names disrupts Complainant’s business. Complainant argues that Respondent uses Complainant’s trademark to misdirect users searching for Complainant’s website to Respondent’s website, where it sells counterfeit merchandise. Past panels have agreed that this behavior is disruptive to a complainant’s business and is evidence of bad faith registration and use per Policy ¶ 4(b)(iii). 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). The Panel finds that Respondent’s disruptive use of the disputed domain names is evidence of bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant asserts that Respondent uses the domain names to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant argues that Respondent uses confusingly similar domain names to create a source of confusion for its own financial gain. The Panel is again directed to Complainant’s attached Exhibit E, which supports Complainant’s argument. Previous panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where a respondent uses a mark confusingly similar to a complainant’s to sell counterfeit products. See F H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). As Respondent likely seeks financial gain through the use of Complainants’ registered mark, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Further, Complainant contends that Respondent had knowledge of Complainant’s rights in the GUESS mark when it registered the disputed domain names. According to Complainant, Respondent uses Complainant’s GUESS mark and Complainant’s photographs. See Compl., at Attached Ex. E. Complainant further alleges that Respondent had constructive knowledge of Complainant’s rights in the GUESS mark due to Complainant’s trademark registration. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel infers due to the fame of the Complainant’s mark and the Respondent’s use manner of the disputed domain names, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate 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).”).
Finally, Complainant argues that Respondent is passively holding a few of the disputed domain names, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). According to Complainant, the <soldeguess-2015.com>, <montreguesssoldes.com> and <guesspascher2015.com> domain names are currently being inactively held by Respondent. See Compl., at Attached Ex. E. Generally, previous panels have found that inactive holding of a disputed domain name may constitute bad faith registration under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). Therefore, the Panel considers that Respondent’s inactive holding of the <soldeguess-2015.com>, <montreguesssoldes.com> and <guesspascher2015.com> domain names as further evidence of bad faith in light of the notoriety of the Complainant’s mark and the Respondent’s pattern of registering several domain names containing the Complainant’s mark under 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 <guesscollectionfemme.com>, <soldesguessmontre.com>, <soldesguessfemme.com>, <soldesguess2014.com>, <soldesguess-sac.com>, <soldesguess-montre.com>, <soldes-guess2014.com>, <soldes-guess-sac.com>, <soldes-guess-montres.com>, <soldes-guess-montre.com>, <soldeguess-montre.com>, <soldeguess-2015.com>, <montreguesssoldes.com>, <montreguesssolde.com>, <montreguesspascher.com>, <guesssoldes-2015.com> and <guesspascher2015.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 6, 2015
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