Guess? IP Holder L.P. and Guess?, Inc. v. Aubry Marion
Claim Number: FA1504001615889
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 Aubry Marion (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fr-guess-enligne.net>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, 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 confirmed by e-mail to the Forum that the <fr-guess-enligne.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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.net. Also on April 27, 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 National Arbitration Forum appointed Darryl C. Wilson, 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. Policy ¶ 4(a)(i)
a. Complainant has rights in the GUESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,433,022, registered on March 17, 1987).
b. Respondent’s <fr-guess-enligne.net> domain name is confusingly similar to Complainant’s GUESS mark because Respondent has simply added the geographical and generic markers “fr” and “enligne” and the generic top-level domain (“gTLD”) “.net.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name, as the WHOIS information for the disputed domain name lists “Aubrey Marion” as Registrant. Respondent has not submitted any further evidence to indicate it is commonly known by the disputed domain name. Moreover, Complainant has not authorized Respondent to use its GUESS mark.
b. Respondent uses the resolving website to sell counterfeit goods in competition with those sold by Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent registered the disputed domain name with the intent to compete with Complainant and disrupt Complainant’s business.
b. Respondent registered the disputed domain name for the purpose of attracting Internet users to Respondent’s resolving website. Respondent thereby commercially profits from Internet users’ confusion as to Complainant’s association with the website.
c. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GUESS mark, which constitutes bad faith in registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple 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.”
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. The two Complainants collectively own the world-famous GUESS brand.
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.
The Panel here finds the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and therefore treats them as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Complainant is Guess? IP Holder L.P. and Guess?, Inc. of Los Angeles, CA, USA. Complainant is the owner of domestic and international registrations for the mark GUESS which the company has continuously used since at least as early as 1981 in connection with its sale of men and women’s apparel and related goods.
Respondent is Aubry Marion of Wuhan, China. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain, <fr-guess-enligne.net> on or about October 20, 2014.
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 is a designer, marketer and distributor of women’s and men’s apparel worldwide. Complainant alleges that it has rights in the GUESS mark through its registration with the USPTO (Reg. No. 1,433,022, registered on March 17, 1987). Complainant has provided documentation of such registration along with documentation of other related marks. Past panels have found that registration with the USPTO adequately demonstrates a Complainant’s rights in a mark under 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)). Past panels have also found that a Complainant need not establish rights in the country in which a Respondent operates, so long as Complainant can demonstrate ownership of a protectable mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel here finds that Complainant’s registration with the USPTO establishes Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <fr-guess-enligne.net> domain name is confusingly similar to Complainant’s GUESS mark because the domain name contains the entirety of Complainant’s GUESS mark, and is altered, only, by the addition of hyphens, the gTLD “.net,” and the markers “fr” and “engline.” Complainant contends that the gTLD and hyphens are irrelevant to determining if a domain name is confusingly similar to a registered mark. Prior panels have agreed. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant further argues that the terms “fr” and “enligne” are geographical or generic markers. Complainant has provided support that indicates “fr” is the country code for France and “enligne” is the French word for “online.” Prior panels have agreed that adding geographic and generic markers or words to a mark creates a confusingly similar domain name. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The Panel here finds that the disputed <fr-guess-enligne.net> domain name is confusingly similar to Complainant’s GUESS mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed <fr-guess-enligne.net> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name, as demonstrated by the available WHOIS information. The Panel notes that “Aubrey Marion” is listed as the Registrant and that Respondent has not submitted any evidence to indicate it is commonly known by the disputed domain name. Complainant further states it has not authorized Respondent to use its GUESS mark. Previous panels have found that a respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) when a respondent fails to provide evidence that it is commonly known by the disputed domain name and the complainant has not authorized the respondent to use its marks,. 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). The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant asserts that Respondent uses the resolving website to sell counterfeit versions of Complainant’s goods in competition with Complainant. Complainant contends that in doing so, Respondent displays Complainant’s GUESS mark in an attempt to pass itself off as Complainant. Complainant has provided screenshots of Respondent’s website in support of these assertions. Past panels have found that the sale of counterfeit goods in competition with a Complainant does not convey rights or legitimate interests in a Respondent. 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). Prior panels have also found that when a Respondent attempts to pass itself off as a Complainant, the Respondent has no rights or legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel here finds the evidence sufficiently supports the allegation that Respondent sells counterfeit versions of Complainant’s goods, and that Respondent attempts to pass itself off as Complainant. The Panel finds that Respondent does not use the disputed domain name to provide a bona fide offering of goods or services, or a legitimate or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent uses the disputed domain name to disrupt Complainant’s business by selling counterfeit versions of goods that Complainant offers for sale. Previous panels have found that when respondents sell counterfeit versions of a complainant’s goods, this disrupts the complainant’s business and is evidence of 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). The Panel here finds that Respondent uses the disputed domain name to sell counterfeit goods, indicates that Respondent operates the domain in bad faith according to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses the disputed domain name to attract Internet users to its resolving website, thereby commercially profiting from the confusion of those Internet users, as to the association of Complainant with the resolving website. Complainant contends that Respondent uses the resolving website to sell counterfeit merchandise while displaying Complainant’s GUESS mark, thereby adding to the likelihood of confusion as to Respondent’s association with Complainant. Prior panels have agreed that the sale of counterfeit goods shows an intent to commercially profit from Internet users’ confusion. 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). The Panel here finds that Respondent uses the disputed domain name for the purposes of commercially profiting from Internet users’ confusion as to its relationship with Complainant, and therefore uses the domain in bad faith pursuant to Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <fr-guess-enligne.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 10, 2015
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