Guess? IP Holder L.P. and Guess?, Inc. v. sammie tavano
Claim Number: FA1612001708773
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 sammie tavano (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessfactory.us.com>, registered with 1API GmbH.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on December 16, 2016.
Complainant submitted a Complaint to the Forum electronically on December 20, 2016; the Forum received payment on December 20, 2016.
On December 22, 2016, 1API GmbH confirmed by e-mail to the Forum that the <guessfactory.us.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On December 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 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@guessfactory.us.com. Also on December 27, 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 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 the the CDRP Domain Name Dispute Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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
Complainant operates in the retail industry. Complainant uses the GUESS mark and registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,271,896, registered Mar. 27, 1984), establishing rights in the mark. Respondent’s <guessfactory.us.com> is confusingly similar to the GUESS mark because it merely adds the descriptive term “factory” (Complainant’s clothing products are produced in a factory) and the “.us.com” suffix.
Respondent has no rights or legitimate interests in <guessfactory.us.com>. Respondent has not been authorized to use the GUESS mark, nor has Respondent been commonly known by the domain name. Further, Respondent uses the domain name to sell counterfeit goods (including those of Complainant) in competition with those offered under Complainant’s mark, which does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and uses <guessfactory.us.com> in bad faith. Respondent’s sale of counterfeit goods, some of which are Complainant’s, constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv), because it disrupts Complainant’s legitimate business and Respondent intends to commercially gain from its use. Further, Respondent had actual or constructive knowledge when registering or using <guessfactory.us.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Guess? IP Holder L.P. and Guess?, Inc., operates in the retail industry. Complainant uses the GUESS mark and registered the mark with the USPTO (e.g., Reg. No. 1,271,896, registered Mar. 27, 1984), establishing rights in the mark. Respondent’s <guessfactory.us.com> is confusingly similar to the GUESS mark.
Respondent, sammie tavano, registered <guessfactory.us.com> on July 30, 2016.
Respondent has no rights or legitimate interests in <guessfactory.us.com>. Respondent uses the domain name to sell counterfeit goods (including those of Complainant) in competition with those offered under Complainant’s mark.
Respondent registered and uses <guessfactory.us.com> 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.
The CDRP also requires that Complainant have paricipated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 has rights in the GUESS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <guessfactory.us.com> domain name is confusingly similar to the GUESS mark under Policy ¶ 4(a)(i) because it merely adds the descriptive term “factory” and the “.us.com” suffix.
Respondent has no rights or legitimate interests in <guessfactory.us.com>. Complainant has not authorized Respondent to use its GUESS mark.
The WHOIS information lists “sammie tavano” as registrant of the domain name. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <guessfactory.us.com> domain name. Respondent uses the domain name to sell counterfeit goods (including those of Complainant) in competition with those offered under Complainant’s mark. Sale of counterfeit goods shows a lack of rights and legitimate interests. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Respondent registered and uses the <guessfactory.us.com> domain name in bad faith. Respondent’s sale of counterfeit products disrupts Complainant’s business under Policy ¶ 4(b)(iii) and creates confusion for Respondent’s commercial gain under Policy ¶ 4(b)(iv). See 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).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Respondent had actual knowledge of Complainant rights in the GUESS mark when registering the <guessfactory.us.com> domain name. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (actual knowledge sufficient ground for finding Policy ¶ 4(a)(iii) bad faith).
Complainant having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessfactory.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 9, 2017
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