Guess? IP Holder L.P. and Guess?, Inc. v. ion mihaela
Claim Number: FA1504001615888
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 ion mihaela (“Respondent”), Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fr-guess-enligne.org>, registered with GoDaddy.com, LLC (R91-LROR).
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2015; the Forum received payment on April 22, 2015.
On April 24, 2015, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the Forum that the <fr-guess-enligne.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) 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 April 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@fr-guess-enligne.org. Also on April 24, 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 May 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant maintain that is has registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,430,022, registered March 17, 1987). The mark is used on or in connection with the sale of men’s and women’s apparel and related goods. The <fr-guess-enligne.org> domain name is confusingly similar to the GUESS mark because the domain name contains the entire mark and makes the following alterations: adding the descriptive terms “fr” and “enligne,” adding two hyphens, and adding the gTLD “.org.”
Complainant maintains that Respondent has no rights or legitimate interests in or to the domain name. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage selling counterfeit goods.
Complainant further alleges that Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business and attempting to commercially profit from a likelihood of confusion. Further, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Respondent registered the disputed domain name on November 14, 2014.
PRELIMINARY ISSUE: 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 that there is sufficient apparent nexus between the two Complainants to treat them as one. The names of the two Complainants are quite nearly identical and the one appears to be the holding company of the other. Although the Panel would appreciate a clearer statement in the record indicating the relationship between the parties to avoid this step and analysis in the future, as this is a default case, the Panel is willing to accept the apparent representation made in the caption of the case and in the body of the Complaint that these two are, indeed, related entities.
As the Respondent has failed to file a response in this matter, the Panel shall make its determination based on the reasonable assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bade faith use and registration of the disputed domain name.
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 hase registered the GUESS mark with the USPTO (e.g., Reg. No. 1,430,022, registered March 17, 1987). The mark is used on or in connection with the sale of men’s and women’s apparel and related goods. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <fr-guess-enligne.org> domain name is confusingly similar to the GUESS mark. To support this claim, Complainant notes that the domain name contains the entire mark and makes the following alterations: adding the descriptive terms “fr” and “enligne,” adding two hyphens, and adding the gTLD “.org.” Complainant also contends that “fr” is the country code for France and “enligne” is the French word for “online.” Complainant has provided a French to English translation for the “enligne” portion of the disputed domain name. See Compl., at Attached Ex. H. As a general rule, the addition of punctuation (such as hyphens) or a gTLD can never distinguish a domain name from the mark at issue. 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); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding 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 addition of descriptive terms—including geographically descriptive terms—to a domain name containing the entire mark at issue creates confusing similarity. 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); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part).
Therefore, the Panel finds that the Respondent’s alterations to Complainant’s GUESS mark in the disputed domain name are not significant enough to remove it from the realm of confusing similarity under Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow it to use the GUESS mark in domain names. “[I]on mihaela” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. When there is no evidence of Respondent’s rights or legitimate interests in a disputed domain name, Respondent cannot have rights or legitimate interests 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’s use of the disputed domain name does not consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant notes that the disputed domain name resolves to a webpage selling counterfeit goods. See Compl., at Attached Ex. E. Prior panels have found that use of a confusing similar domain name to sell counterfeit goods cannot give the respondent rights or legitimate interests. See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant also alleges that the Respondent is selling counterfeit goods under the disputed domain name. As there is no evidence in the record to counter this claim, the Panel accepts it at true. As such, the Panel denies the Respondent rights under Policy ¶¶ 4(c)(i) or (iii) and finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. Complainant argues that its business is being disrupted by Respondent’s sale of counterfeit versions of Complainant’s own goods at the resolving webpage. See Compl., at Attached Ex. E. Prior panels have found that use of a domain name to sell counterfeit goods can consist of bad faith under Policy ¶ 4(b)(iii). 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).
As there is no evidence in the record to respond to this claim, the Panel finds that the Respondent is engaged in selling counterfeit goods at the resolving webpage. As such, the Panel finds that Respondent has engaged in a bad faith disruption of a legitimate commercial purpose of the Complainant pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant argues that because the resolving webpage contains counterfeit goods, Internet users will think the webpage is Complainant’s. By selling counterfeit goods, Respondent clearly intends to commercially profit from the resulting confusion. Prior panels have found Policy ¶ 4(b)(iv) bad faith where the domain name at issue was used to sell counterfeit goods. See 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).
Consequently, the Panel finds that Respondent has acted in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the GUESS mark. Complainant argues that Respondent's offering of counterfeit products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights thereto. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore the Panel determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
In the present case, given the degree of similarity and the resulting disputed domain name, coupled with the fact that there is no evidence to the contrary in the record, the Panel finds that the Respondent had actual notice of Complainant’s trademark and its rights therein.
As such, given the totality of the circumstances, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed 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 <fr-guess-enligne.org> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 28, 2015
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