Guess? IP Holder L.P. and Guess?, Inc. v. DENES Celine
Claim Number: FA1508001631729
Complainants are Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is DENES Celine (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-soldes.com>, 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.
Bruce E. Meyerson as Panelist.
Complainants submitted a Complaint to the Forum electronically on August 3, 2015; the Forum received payment on August 3, 2015.
On August 4, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guess-soldes.com> 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 August 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@guess-soldes.com. Also on August 5, 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 August 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. These entities are affiliated companies which, between them, own multiple trademarks bearing the GUESS mark. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006); Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003). The two complaining parties have provided sufficient evidence to establish the required nexus or link between them, such that they may be considered a single entity in this proceeding. Hereafter, Guess? IP Holder L.P. and Guess?, Inc. will collectively be referred to as “Complainant.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns numerous trademark registrations for the GUESS mark throughout the world, including registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,427,405, registered Feb. 3 1987) and France’s National Institute of Industrial Property (“NIIP”) (e.g., Reg. No. 1,361,413, renewed March 12, 1996). Complainant 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. The <guess-soldes.com> domain name is confusingly similar to the GUESS mark. The domain name includes a generic term “soldes,” which translates to “sales,” adds a hyphen, and inserts the generic top-level domain (“gTLD”) “.com.”
2. 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.
3. Further, Complainant has never given permission for Respondent to use Complainant’s trademark. Respondent has failed to use the <guess-soldes.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the <guess-soldes.com> domain name to sell Complainant’s products and other counterfeit goods.
4. Respondent has engaged in bad faith registration and use of the <guess-soldes.com> domain name. Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by misleading Complainant’s consumers.
5. 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).
6. The <guess-soldes.com> domain name was registered August 22, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GUESS mark. Respondent’s domain name is confusingly similar to Complainant’s GUESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <guess-soldes.com> domain name, and that Respondent registered and uses the 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.”).
Complainant owns numerous trademark registrations for its GUESS mark throughout the world, including registrations with the USPTO (e.g., Reg. No. 1,427,405, registered Feb. 3 1987) and the NIIP (e.g., Reg. No. 1,361,413, renewed March 12, 1996). Complainant 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. 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 Microsoft Corp. v. Lafont, FA 1349611 (Nat. Arb. Forum Nov. 9, 2010) (concluding that the complainant’s trademark registration with the NIIP, among other national trademark authorities, was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant’s USPTO and NIIP registrations are sufficient to establish Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i).
Complainant asserts that the <guess-soldes.com> domain name is confusingly similar to the GUESS mark. The disputed domain name includes a generic term “soldes,” which translates to “sales,” adds a hyphen, and inserts the gTLD “.com.” Comparable changes have been found to amount to confusing similarity in other proceedings. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Moreover, the addition and/or removal of a punctuation mark is insufficient to create distinctiveness. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); 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"). Further, the addition of a hyphen and a gTLD is insufficient to distinguish the disputed domain name from the registered mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). As such, this Panel may determine that the <guess-soldes.com> domain name is confusingly similar the GUESS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <guess-soldes.com> domain name. Complainant argues that Respondent is not commonly known by the <guess-soldes.com> domain name, as the WHOIS record for the domain name does not reflect that Respondent is commonly known by the <guess-soldes.com> domain name. The WHOIS information for the <guess-soldes.com> domain name lists “DENES Celine” as the registrant of record. Further, Complainant states that it has never given permission for Respondent to use Complainant’s trademark. Accordingly, the Panel agrees that Complainant’s unrefuted contentions are sufficient to establish Respondent’s lack of rights to the <guess-soldes.com> domain name 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 argues that Respondent has failed to use the <guess-soldes.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the <guess-soldes.com> domain name to sell Complainant’s products and other counterfeit goods. Complainant asserts that Respondent uses the <guess-soldes.com> domain name to sell goods directly competing with Complainant’s own GUESS brand goods. 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 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 actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a proper noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and use of the <guess-soldes.com> domain name disrupts Complainant’s business by misleading Complainant’s consumers. Complainant asserts that Respondent uses Complainant’s trademark and copyright protected photographs to sell counterfeit goods which is disruptive to Complainant’s business and evidence of bad faith registration and use 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).
Additionally, Complainant argues that Respondent uses the <guess-soldes.com> domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant argues that Respondent uses a confusingly similar domain name to create a source of confusion for its own financial gain attempting to sell counterfeit goods bearing the GUESS label. Bad faith registration and use exists where a respondent uses a domain name confusingly similar to a complainant’s mark to sell counterfeit products. 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). As Respondent likely seeks financial gain through the use of Complainant’s registered mark, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent had knowledge of Complainant’s rights in the GUESS mark when it registered the <guess-soldes.com> domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). Given the similarity between the <guess-soldes.com> domain name and the GUESS mark it is apparent to the Panel that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <guess-soldes.com> domain name which is 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).”).
The Panel finds Complainant has satisfied 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 <guess-soldes.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 14, 2015
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