DECISION

 

Guess? IP Holder L.P. and Guess?, Inc. v. saqib jillani

Claim Number: FA1612001707547

PARTIES

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 saqib jillani (“Respondent”), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guess-outlet.org>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically December 14, 2016; the Forum received payment December 14, 2016.

 

On December 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guess-outlet.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 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-outlet.org.  Also on December 21, 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 Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant’s Contentions in this Proceeding:

 

            Complainant uses the GUESS marks in connection with its business as worldwide clothing retailers.  Complainant’s rights in the GUESS marks stem from registration of the mark with trademark agencies throughout the world including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered March 17, 1987).  Respondent’s disputed domain <guess-outlet.org> is confusingly similar to the GUESS mark as the domain name includes the mark in its entirety and merely adds the word “outlet,” a hyphen, and the generic top-level domain (“gTLD”) “.org.”

            Respondent has no rights or legitimate interests in the disputed domain name.  Respondent is not commonly known by the disputed domain name.  Respondent’s use of the domain name is not a use in connection with a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. Respondent’s domain resolves to a parked website hosting pay-per-click advertisements for fashion products that compete with Complainant’s products. 

            Respondent registered and is using the disputed domain name in bad faith.  Respondent’s use of Complainant’s GUESS mark in the disputed domain name and use of the resolving website to host links to products or websites that compete with Complainant show that Respondent is attempting to confuse and attract Internet users for Respondent’s own commercial gain. 

 

Respondent’s Contentions in this Proceeding:

 

            Respondent did not submit a Response in this proceeding.  The Panel notes that Respondent registered the disputed domain name May 26, 2016.

 

FINDINGS

Complainant shows by substantial evidence rights and legitimate interests in its internationally known mark.

 

Respondent has no such rights or legitimate interests in the disputed domain name containing in its entirety Complainant’s protected mark.

 

Respondent registered and uses a disputed domain name that is confusingly similar to Complainant’s protected mark.

 

Respondent registered and uses the disputed domain name in bad faith.

 

DISCUSSION

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 to 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.

 

Given 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 will draw such inferences as the Panel 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.”).

 

Identical or Confusingly Similar:

 

Complainant contends that it has rights in the GUESS mark based on registration of the marks with multiple trademark agencies, including the USPTO (e.g., Reg. No. 1,433,022, registered March 17, 1987).  See Compl., at Attached Ex. D.  A  complainant has rights in a mark based on registration of the mark with the USPTO.  See Lockheed Martin Corp. v. Hoffman, FA 874152 (Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).  The Panel finds that Complainant has such rights in the GUESS mark.

 

Complainant next contends that Respondent’s disputed domain <guess-outlet.org> is confusingly similar to the GUESS mark as the domain name includes the mark in its entirety and merely adds the word “outlet,” a hyphen, and the generic top-level domain (“gTLD”) “.org.”  Addition of hyphens, gTLDs, and descriptive terms are not relevant to an analysis of confusing similarity.  See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).  The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s protected mark.

 

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that Respondent registered and uses a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights and Legitimate Interests:

 

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 of proof shifts to Respondent to show it does have such rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 argues that Respondent is not commonly known by the disputed domain name and is not licensed by Complainant to use the GUESS mark in any manner.  WHOIS information associated with the disputed domain name identifies Respondent as “SAQIB JILLANI,” which does not have commonality with the disputed domain name.  See Compl., at Attached Ex. A. A respondent is  not commonly known by a disputed domain name where the WHOIS information is silent and no contradictory evidence suggests such commonality.  See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).  The Panel finds that Respondent is not commonly known by the disputed domain name under a Policy ¶ 4(c)(ii) analysis.

 

Complainant next argues that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.   Respondent’s domain name resolves to a website that hosts a parking page and pay-per-click advertisements for clothing, apparel, and accessories, which competes with Complainant’s own offerings.  See Compl., at Attached Ex. E. A respondent using a domain name to display advertisements for products in competition with products offered by a complainant is not using a domain name in a manner acceptable under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).  See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).  The Panel finds that Respondent’s use of the domain is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. 

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).   

 

Registration and Use in Bad Faith:

 

Complainant claims that Respondent’s use of Complainant’s GUESS mark in the disputed domain name and use of the resolving website to host links to products or websites that compete with Complainant show that Respondent seeks to confuse and attract Internet users for Respondent’s own commercial gain.  Again, Respondent’s domain name is used to resolve to a website that hosts advertisements for categories of fashion products that compete with products offered by Complainant.  See Compl., at Attached Ex. E. A respondent’s use of a domain name that is confusingly similar to another’s mark for purposes of displaying competing advertisements demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).  See Vivint, Inc. v. Online Management, FA1403001549084 (Forum April 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).  The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and uses the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

DECISION

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-outlet.org> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: January 30, 2017

 

 

 

 

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