Guess? IP Holder L.P. and Guess?, Inc. v. Justin Niebergall
Claim Number: FA1707001739725
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 Justin Niebergall (“Respondent”), represented by Peter C. Lemire of Leyendecker & Lemire, LLC, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess.club>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2017; the Forum received payment on July 12, 2017.
On July 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guess.club> 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 July 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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.club. Also on July 13, 2017, 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.
A timely Response was received and determined to be complete on August 22, 2017.
A timely Additional Submission was received from Complainant on August 24, 2017.
A timely Additional Submission was received from Respondent on August 25, 2017.
On August 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the GUESS trademark in connection with the creation and sale of apparel and related goods. Complainant registered the GUESS trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,271,896, registered Mar. 27, 1984), as well as in numerous other jurisdictions, which demonstrates its rights in the trademark. Respondent’s domain name <guess.club> features Complainant’s GUESS trademark with the mere addition of the “.club” generic top-level domain (“gTLD”), creating an identical or confusingly similar domain name.
Respondent has no rights or legitimate interests in <guess.club>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the GUESS trademark for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services, because the domain name resolves to a site that is inactive. Respondent has also communicated to Complainant that it intends to use the domain name to promote competing goods. This intended use also does not impute rights or legitimate interests.
Respondent registered and used <guess.club> in bad faith. Respondent replied to Complainant’s initial letter, stating if Complainant had an interest to “purchase/lease the rights to my namespaces, I’m all ears,” and invited Complainant to make an offer that would support Respondent’s other tech projects and debts. Subsequently, Respondent offered the domain name to Complainant for $75,000. Further, Respondent’s actual knowledge and nonuse of the domain name indicates bad faith.
B. Respondent
The domain name <guess.club> is distinguished from - and cannot be considered confusingly similar or identical to - the GUESS trademark because “.club” has inherent meaning beyond that of a typical gTLD. Respondent is using the secondary and top-level portions of the domain name in accordance with the terms’ dictionary meanings.
Respondent registered <guess.club> for a legitimate business purpose; namely, Respondent intends to use the domain name to provide a unique ecommerce platform that allows antique and vintage item enthusiasts the opportunity to showcase their items by way of blogs, images and anecdotes and allow the sale of these items not on a first come first served basis, or an auction based mechanism, but rather on a mechanism that allows members to guess the value or price assigned to the item by the owner and recorded. The member whose guesses the closest then has the first right to negotiate the purchase of the item. Respondent has engaged a professional web developer to create a high-quality website that would not necessarily center around the auction of vintage clothing items that the public might associate with Complainant. Accordingly, Respondent has made demonstrable preparations to use the domain name in a bona fide manner prior to the initiation of this dispute.
Non-use of a domain name is not dispositive of bad faith. Rather, Respondent intends to make a legitimate use of the domain name - and has demonstrated as much - precluding a finding of bad faith. As to Policy ¶ 4(b)(i), Respondent valued its business in good faith at $75,000, and Respondent estimates it has invested $25,000 into the development of the website already. Respondent also explicitly stated to Complainant that the domain name is not for sale. Respondent has therefore not registered or used <guess.club> in bad faith.
C. Additional Submissions
Complainant’s Additional Submission
Complainant states that Respondent in his Response relies on numerous incorrect legal statements and mischaracterizes and omits important facts that clearly demonstrate a complete absence of any rights or legitimate interest in the disputed domain name, and the clear registration and use of the subject domain name in bad faith, attempting to mislead the Panel.
Even if the Panel were to consider the .club new gTLD in this case, the subject
domain name is still confusingly similar to Complainants' trademarks.
Respondent has not provided evidence of "Demonstrable Preparations of
Making a Bona Fide Offering of Goods and Services at the Subject Domain Name”. The correspondence and invoices referred to are silent as to Respondent's intended use of the domain name, and is not evidence of a legitimate use, particularly where, as here, it is evident that Respondent will be using Complainant's trademark to sell directly competitive products
Further, Respondent egregiously attempts to mislead the Panel as to its use of its Instagram account, and plainly intends to capitalize on the goodwill of Complainants and their GUESS trademarks. His use of his Instagram account shows that the guess.club domain name is intended for display and sale of goods (e.g., vintage goods) bearing Complainants' trademarks. Further, if Respondent's statement were taken as true, it would clearly indicate that Respondent has been using Complainants' trademarks to attract "antique enthusiasts" of Complainants' brand, further increasing the likelihood of confusion and clearly evincing an attempt to capitalize on Complainants' goodwill. Respondent's suggestion that additional types of "items" may also be offered for sale at the subject domain is irrelevant.
Respondent does not have a legitimate interest in the subject domain name, and any differences in goods or services are irrelevant to this analysis.
Further, Respondent argues that it did not offer to sell the domain name to
Complainants. This is false. In correspondence dated June 27, 2017, Respondent stated, "If Guess? would like to engage me in a business partnership or simply purchase/lease the rights to my namespaces, I'm all ears." Respondent continued, "having the funding for my other tech projects and to take care of some old debt in my life is just as appealing."
Respondent’s Additional Submission
Respondent refers to that he has spent 25,000 dollars in development costs for the ecommerce site related to the disputed domain name.
Respondent agrees to that Guess.Club and Guess.Com could be perceived as similar. Yet, once somebody lands on the connected web page the confusion would alleviate because no trademarks of the complainants are used at all. I have made this my intent since day one of the inception of my ecommerce platform. Respondent also refers to the general meaning of the word “Guess?”.
Respondent further confirms that he is a fan of clothing related to the trademark Guess?, but denies that the registration and use of the disputed domain name and Respondent’s corresponding Instagram page is in bad faith.
The Panel finds that Complainant has established trademark rights in the GUESS trademark, covering the following registrations with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,704,002 GUESS, registered July 28, 1992
Reg. No. 2,380,188 GUESS? (fig), registered August 29, 2000
Reg. No. 5,107,364 GUESS DARE, registered December 27, 2016
Reg. No. 5,151,386 GUESS (fig), registered February 28, 2017
Respondent registered <guess.club> on April 26, 2017.
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.
Multiple Complainants
Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” 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 named complainants: Guess? IP Holder L.P. and Guess?, Inc. The Panel notes that this is not the first complaint filed by these companies which does not address the Forum’s Supplemental Rule 1(e). However, for the purposes of Supplemental Rule 1(e) the Panel agrees that it seems likely that the named Complainants are part of the one company group and that the most likely relationship is that of parent and a related company which owns the group’s intellectual property rights. The Panel therefore treats the named Complainants as a single entity and all references herein to “Complainant” are to be understood in that way. See, e.g., Guess? IP Holder L.P. and Guess? Inc. v. Protection of Private Person, FA1736058 (Forum July 16, 2017).
Complainant owns the Reg. No. 1,704,002 GUESS trademark through registration with the USPTO (Reg. No. 1,704,002, registered Oct. 20, 1987). It is the Panels opinion that this USPTO registration indicate rights in the GUESS trademark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
While Respondent contends that <guess.club> is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s trademark, the Panel find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the trademark and whether the disputed domain name is identical or confusingly similar to Complainant’s trademark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)).
Once Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent has no rights or legitimate interests in <guess.club>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the GUESS trademark for any purpose.
The Panel notes that the WHOIS information regarding the disputed domain name lists “Justin Niebergall” as registrant. Therefore, in light of the available evidence, the Panel agrees there is no basis to find Respondent commonly known by <guess.club> pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (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 further contends that Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services, because <guess.club> resolves to an inactive web site. Inactive use may indicate a lack of rights and legitimate interests. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Moreover, Complainant indicates that Respondent has also communicated that it intends to use the domain name to promote competing goods. See Compl., at Attached Ex. F. This intended use also may not impute rights or legitimate interests. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent argues that he is currently in preparations to make legitimate commercial use of the disputed domain name that is not intended to divert consumers from Complainant or would otherwise tarnish Complainant’s trademark/s.
The Panel is however not convinced by the evidence provided by Respondent. On the contrary, based on both the documentation provided from Complainant and Respondent, the Panel concludes that Respondent may have made preparations of use for a web site that sells second-hand goods from Complainant and other companies, or at least used the disputed domain name in claiming a considerable amount of monetary compensation for transferring <guess.club> to Complainant. Such use can never establish legitimate interests
Therefore, the Panel agrees that wholly appropriating Complainant’s trademark to either inactively hold or to compete with Complainant cannot rise to the level of what is generally considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Having said that, the Panel notes that the “use” of the disputed domain name has rather been in the form of negotiation with Complainant of a considerable amount of money. Respondent replied to Complainant’s initial letter, stating if Complainant had an interest to “purchase/lease the rights to my namespaces, I’m all ears,” and invited Complainant to make an offer that would support Respondent’s other tech projects and debts. Subsequently, Respondent offered the domain name to Complainant for $75,000. Offers for that amount have been found in bad faith. See Amazon Technologies, Inc. v. Robert Nichols, FA1693499 (Forum Oct. 20, 2016) (finding bad faith under Policy ¶ 4(b)(i) where respondent offered to sell its domain names to complainant for $75,000).
The Panel agrees that Respondent’s language “75k dollars is what I estimate the project will be worth when completed” manifests an intent to extend an offer inviting acceptance, which constitutes bad faith under Policy ¶ 4(b)(i).
Respondent has confirmed that Respondent had good knowledge of Complainant’s trademark rights to GUESS before the registration of the disputed domain name. Further, Respondent agrees to “that Guess.Club and Guess.Com could be perceived as similar”, and that Respondent is a fan of the products related to the Complainant’s trademark GUESS.
Respondent has sold vintage goods, marked with Complainant’s trademark, at Instagram.
In Appendix 1 of the Response, Respondent has provided 7 pages of invoices and e-mail correspondence related to some kind of web site creation. At none of those pages is the disputed domain name mentioned. The project may therefore well be connected to another domain name or web site project.
Exhibit B of the Response is presented as a “Business plan for guess.club developed by Respondent prior to Domain Name registration”.
However, the Panel notes that this “Business plan” clearly state that “3 months of owning the domain is well under a common law statute of limitations regarding domain ownership” – thereby clearly related to the ongoing domain name dispute.
Therefore, the Panel cannot draw any other conclusion than the “Business plan” has been created during this process in an attempt to falsely convince the Examiner that <guess.club> was registered and intended to be used in good faith.
The Panel concludes that Complainant has succeeded in proving the three elements within Policy ¶ 4.
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.club> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 7, 2017
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