Guess? IP Holder L.P. and Guess?, Inc. v. Jianghong Wang
Claim Number: FA1612001707546
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie, LLP, California, USA. Respondent is Jianghong Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guess-abc.com> and <abc-guess.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2016; the Forum received payment on December 14, 2016.
On December 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guess-abc.com> and <abc-guess.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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-abc.com, postmaster@abc-guess.com. Also on December 19, 2016, 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 January 20, 2017, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global producer of men’s and women’s apparel and related goods. Complainant uses the GUESS mark in relation to its business operations. Complainant registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,271,896, registered Mar. 27, 1984). Complainant has additional mark registrations with the Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China (“SAIC”) (e.g., Reg. No. 793772, registered Nov. 21, 1995). Respondent’s <guess-abc.com> and <abc-guess.com> are confusingly similar to Complainant’s GUESS mark because it uses the mark in its entirety, adding a hyphen, the generic term “abc,” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights to <guess-abc.com> and <abc-guess.com>. Respondent is not known by the disputed domain names. Complainant has not permitted or licensed Respondent to use the GUESS mark in any respect. Responded has not made a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name. Respondent’s <guess-abc.com> and <abc-guess.com> redirect Internet users to webpages that display Complainant’s mark and offer counterfeit goods in direct competition with Complainant.
Respondent registered and is using <guess-abc.com> and <abc-guess.com> in bad faith. The disputed domain names divert Internet users to counterfeit websites, selling counterfeit goods. Respondent’s apparent intent is to disrupt Complainant’s business, thus evincing bad faith under Policy ¶ 4(b)(iii). Respondent registered <guess-abc.com> and <abc-guess.com> with actual knowledge of Complainant and its rights to the GUESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 Jianghong Wang of Shaanxi, China. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that Respondent registered <guess-abc.com> and <abc-guess.com> on or about June 12, 2016.
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(f), 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 (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 global producer of men’s and women’s apparel and related goods. Complainant uses the GUESS mark in relation to its business operations. Complainant states it registered the GUESS mark with USPTO (e.g., Reg. No. 1,271,896, registered Mar. 27, 1984). Complainant also has additional mark registrations with SAIC (e.g., Reg. No. 793772, registered Nov. 21, 1995). Past panels have held that registrations with the USPTO and other governmental agencies are sufficient to establish a complainant’s rights to the mark. See Guess? IP Holder L.P. and Guess?, Inc. v. zhou hong hai, FA 1610066 (Forum May 1, 2015) (determining that “Complainant’s USPTO and SAIC registrations are sufficient to establish Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has rights to the GUESS mark.
Complainant argues that Respondent’s <guess-abc.com> and <abc-guess.com> are confusingly similar to Complainant’s GUESS mark because it uses the mark in its entirety, adding a hyphen, the generic term “abc,” and the “.com” gTLD. In Microsoft Corporation v. Thong Tran Thanh, the Panel determined that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. The differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy. (FA 1653187 (Forum Jan. 21, 2016)). Additionally, prior panels have held that the addition of a hyphen is not sufficient to differentiate a disputed domain name from a complainant’s mark. 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"). The Panel here finds that Respondent’s <guess-abc.com> and <abc-guess.com> are confusingly similar to Complainant’s GUESS mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
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), 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). Complainant has met this burden.
Complainant asserts Respondent has no rights to <guess-abc.com> and <abc-guess.com>. To support its argument, Complainant avers Respondent is not known by the disputed domain names. WHOIS information associated with the case identify Respondent as “Jianghong Wang.” Previous panels have found WHOIS information to be sufficient in establishing a Respondent is not commonly known by the disputed domain name without evidence to the contrary. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel here finds that Respondent is not commonly known by the disputed domain names.
Furthermore, Complainant contends that it has not permitted or licensed Respondent to use the GUESS mark in any respect. Complainant argues that Respondent has not made a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name. Complainant provides evidence indicating that Respondent’s <guess-abc.com> and <abc-guess.com> redirect Internet users to webpages that display Complainant’s mark and offer counterfeit goods in direct competition with Complainant. The sale of counterfeit goods evinces a lack of a bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶ 4(c)(i). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Keihin Corp. v. Youli Ltd., FA 1106190 (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). The Panel here finds that Respondent has no legitimate rights or interests in <guess-abc.com> and <abc-guess.com> under Policy ¶4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because 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.
Complainant has proven this element.
Complainant asserts Respondent registered and is using <guess-abc.com> and <abc-guess.com> in bad faith. Complainant provided evidence that the disputed domain names divert Internet users to counterfeit websites, selling counterfeit goods. Complainant argues Respondent’s apparent intent is to disrupt Complainant’s business through the sale of counterfeit goods, thus evincing bad faith under Policy ¶ 4(b)(iii). In a related case, the Panel in Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, found that “Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).” (FA1410001587466 (Forum Dec. 13, 2014)). See also H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)). The Panel here finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ (b)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because 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 <guess-abc.com> and <abc-guess.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 3, 2017
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