Guess? IP Holder L.P. and Guess?, Inc. v. Xiao Zheng
Claim Number: FA1507001628998
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 Xiao Zheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sac-a-main-guess.com>, registered with HiChina Zhicheng Technology Limited.
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 July 15, 2015; the Forum received payment on July 15, 2015. The Complaint was received in both Chinese and English.
On July 16, 2015, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <sac-a-main-guess.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 July 21, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 10, 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@sac-a-main-guess.com. Also on July 21, 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 August 12, 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 name 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 China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 393,554, registered July 20, 1987). Complainant uses the GUESS mark in connection with its lifestyle brand, which distributes its full collections of women’s and men’s apparel throughout the United States, Canada, and worldwide. Complainant’s offerings include apparel and related goods, including women’s handbags, watches, footwear, belts, fragrance, and jewelry. The <sac-a-main-guess.com> domain name is confusingly similar to the GUESS mark. The domain name includes the phrase “sac-a-main,” and adds a generic top-level domain (“gTLD”) “.com” to the domain name.
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never licensed Respondent to use Complainant’s trademark. Respondent’s lack of rights or legitimate interests in the <sac-a-main-guess.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. Respondent uses the <sac-a-main-guess.com> domain name to sell counterfeit goods in competition with those offered under Complainant’s GUESS mark.
(iii) Respondent has engaged in bad faith registration and use of the <sac-a-main-guess.com> domain name. Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by misleading Complainant’s consumers. Additionally, Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Finally, Respondent had knowledge of Complainant’s rights in the GUESS mark when it registered the disputed domain name, 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 this <sac-a-main-guess.com> domain name was registered on June 15, 2015.
A. Multiple Complainants
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. 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.”
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 both Complainants Guess? IP Holder L.P. and Guess?, Inc. collectively own the world-famous GUESS brand. As such, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it treats them all as a single entity in this proceeding. Throughout the below decision, the Complainants will be collectively referred to as “Complainant.”
B. 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 name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 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.”).
To assert its ownership in the GUESS mark, Complainant claims that it registered its mark with the USPTO (e.g., Reg. No. 1,433,022, registered March 17, 1987) and the SAIC (e.g., Reg. No. 393,554, registered July 20, 1987). Complainant contends that it uses the GUESS mark in connection with its lifestyle brand, which distributes its full collections of women’s and men’s apparel throughout the United States, Canada, and worldwide. Complainant explains that its offerings include apparel and related goods, including women’s handbags, watches, footwear, belts, fragrance, and jewelry. 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant’s USPTO and SAIC registrations are sufficient to establish Complaint’s rights in the GUESS mark under Policy ¶ 4(a)(i).
Complainant alleges that the <sac-a-main-guess.com> domain name is confusingly similar to the GUESS mark. The domain name includes the phrase “sac-a-main,” and adds a generic top-level domain (“gTLD”) “.com” to the domain name. Complainant claims that the phrase “sac-a-main” is the French word for “handbag.” Past panels have found that the addition of a descriptive term or phrase does not distinguish the disputed domain name from a complainant’s mark, and may serve to enhance confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Past panels have additionally found that including hyphens in a disputed domain name does not eliminate confusion. 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).”). Further, past panels have routinely agreed that the addition of gTLD is insufficient to distinguish the disputed domain name from the registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As such, this Panel determines that the disputed domain name is confusingly similar 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant insists that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel sees that the WHOIS information for the disputed domain name lists “Xiao Zheng” as the registrant of record. Further, Complainant claims it has never licensed Respondent to use Complainant’s trademark. As Respondent has failed to provide any evidence that would show it is commonly known by the disputed domain name, the Panel agrees that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <sac-a-main-guess.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 demonstrates that Respondent uses the <sac-a-main-guess.com> domain name to sell counterfeit goods in competition with those offered under Complainant’s GUESS mark. Complainant asserts that Respondent uses the disputed domain name to divert consumers searching for Complainant and its goods to a website operated by Respondent. Previous panels have found that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policies ¶ 4(c)(i) or ¶ 4(c)(iii). See A 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 concludes that Respondent’s use of the disputed domain name is not 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).
Complainant argues that Respondent’s registration and use of the disputed domain name disrupt Complainant’s business by misleading Complainant’s consumers. According to Complainant, Respondent uses the disputed domain name to sell counterfeit GUESS goods. Prior panels have found that use of a disputed domain name to sell counterfeit goods is proscribed 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). The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit items is evidence of bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant asserts that Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant alleges that Respondent uses the disputed domain name to sell counterfeit GUESS goods. Prior panels have found that selling counterfeit goods through a confusingly similar domain name is prohibited under Policy ¶ 4(b)(iv). 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). The Panel concludes that Respondent has engaged in bad faith use pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent had knowledge of Complainant’s rights in the GUESS mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). According to Complainant, Respondent uses Complainant’s GUESS mark and Complainant’s photographs. Complainant further alleges that Respondent had constructive knowledge of Complainant’s rights in the GUESS mark due to Complainant’s trademark registration. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers due to the fame of Complainant’s marks and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sac-a-main-guess.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 20, 2015
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