Guess? IP Holder L.P. and Guess?, Inc. v. YouYang Rong / LvDie Lou / ZuoZhuo Yu / LiangPeng Huo / SongFan Lian
Claim Number: FA1508001631728
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 YouYang Rong / LvDie Lou / ZuoZhuo Yu / LiangPeng Huo / SongFan Lian (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fr-guess-paris.net>, <guess-boutique.com>, <fr-guess-soldes.com>, <fr-guess.com>, and <guess-soldes.net>, registered with Zhengzhou Zitian Network Technology Co., Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2015; the Forum received payment on August 3, 2015.
On August 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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-paris.net, postmaster@guess-boutique.com, postmaster@fr-guess-soldes.com, postmaster@fr-guess.com, postmaster@guess-soldes.net. Also on August 14, 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.
On August 16, 2015, the Forum received confirmation from the Registrar, Zhengzhou Zitian Network Technology Co., that the <fr-guess-paris.net>, <guess-boutique.com>, <fr-guess-soldes.com>, <fr-guess.com>, and <guess-soldes.net> domain names had been locked. After numerous requests, the Registrar, Zhengzhou Zitian Network Technology Co., Ltd., has not confirmed to the National Arbitration that the <fr-guess-paris.net>, <guess-boutique.com>, <fr-guess-soldes.com>, <fr-guess.com>, and <guess-soldes.net> domain names are registered with Registrar, Zhengzhou Zitian Network Technology Co., Ltd. or that the Respondent is the current registrant of the names. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
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.”
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Complainants do not address the connection between them. However, the complaint does list Complainants together under the “Complainants’ Information” section of the complaint and provides a single address and e-mail for both of them together. Complainant goes on to state: “Complainants, Guess ? IP Holder L.P. and Guess?, Inc. (collectively, ‘Complainants” or “Guess?”), 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. 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.”).
In this case, the two complainants appear to own the trademarks in question. Therefore, they may act as a single Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Registrants, addresses, telephone and fax numbers listed for all the entities are the same when this proceeding was first brought (and the WHOIS information agreed). Once the proceeding was brought, the registrar failed to lock the domain names as required under ICANN’s policy. The Registrants randomly changed, although the contents of the web sites remained the same along with the IP address.
Complainant has presented sufficient evidence demonstrating the listed entities are jointly controlled. Respondent has not rebutted this contention.
A. Complainant
Complainant 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-paris.net>, <guess-boutique.com>, <fr-guess-soldes.com>, <fr-guess.com>, and <guess-soldes.net> domain names are confusingly similar to the GUESS trademark because they contain the entire GUESS mark and make only minor alterations, such as: adding the generic terms “soldes” (which is French for “sales”) and “boutique,” adding geographically descriptive terms such as “fr” and “paris,” adding a hyphen in between various terms in each of the domain names, and adding the generic top-level domains (“gTLDs”) “.net” and “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain names, nor is Respondent a licensee of Complainant. Further, Respondent has not provided a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Rather, some of the disputed domain names resolve to a webpage selling counterfeit goods.
Respondent has engaged in bad faith registration and use of the disputed domain names pursuant to Policy ¶4(a)(iii). 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.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 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 (or any other governmental authority) 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 claims the <fr-guess-paris.net>, <guess-boutique.com>, <fr-guess-soldes.com>, <fr-guess.com>, and <guess-soldes.net> domain names are confusingly similar to the GUESS trademark. All of the domain names contain the entire GUESS mark and make only minor alterations, such as adding the generic terms “soldes” (which is French for “sales”) and “boutique,” adding geographically descriptive terms such as “fr” and “paris,” adding a hyphen in between various terms in each of the domain names, and adding the gTLDs “.net” and “.com.” Adding punctuation (such as hyphens) or a gTLD can never distinguish a domain name from the mark at issue under a Policy ¶4(a)(i) analysis. 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 generic terms—including geographically descriptive terms—to a domain name containing the entire mark at issue creates a confusing similarity between the two. 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). Respondent’s alterations to Complainant’s GUESS mark in the disputed domain names are not significant enough to remove it from the realm of confusing similarity under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights to use the GUESS mark in domain names. The current listed registrants of record for the disputed domain names are “YouYang Rong,” “LvDie Lou,” “ZuoZhuo Yu,” “LiangPeng Huo,” and “SongFan Lian.” There is no obvious relationship between any of these names and the disputed domain names. The record has no evidence to indicate Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Absent such evidence, 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 claims Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain names all resolve to a webpage selling counterfeit goods. Respondent cannot acquire rights or legitimate interests by using a confusing similar domain name to sell counterfeit goods. 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). Respondent has no rights under Policy ¶¶4(c)(i) or (iii) because Respondent is selling counterfeit goods under the disputed domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in bad faith registration and use. Respondent has displayed bad faith registration and use under Policy ¶4(b)(iii) by disrupting Complainant’s business by selling counterfeit versions of Complainant’s goods. Using of a domain name to sell counterfeit goods constitutes bad faith registration and use 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). Respondent is selling counterfeit goods at the resolving webpage, demonstrating bad faith pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent has displayed bad faith under Policy ¶4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Internet users will think Respondent’s webpage is Complainant’s webpage because it contains counterfeit goods. Respondent clearly intends to commercially profit by selling counterfeit goods. 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). Respondent registered and uses the domain names in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant's rights in the GUESS mark. This seems to be a logical assumption because Respondent offers counterfeit products at the resolving website. This means Respondent registered and uses 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").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <fr-guess-paris.net>, <guess-boutique.com>, <fr-guess-soldes.com>, <fr-guess.com>, and <guess-soldes.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, September 22, 2015
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