Guess? IP Holder L.P. and Guess?, Inc. v. ji zhou chen
Claim Number: FA1709001748495
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is ji zhou chen (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessoutletuk.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2017; the Forum received payment on September 11, 2017.
On Sep 12, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guessoutletuk.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 September 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@guessoutletuk.com. Also on September 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is global manufacturer and retailer of men’s and women’s apparel, and related goods and services. Complainant uses the GUESS mark in conjunction with its business practices. Complainant registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022; registered Mar. 17, 1987). Respondent’s <guessoutletuk.com> is confusingly similar to Complainant’s GUESS mark because it incorporates the mark in its entirety, adding the generic term “outlet,” the geographic abbreviation “UK,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in <guessoutletuk.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the GUESS mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <guessoutletuk.com> resolves to a website selling counterfeit versions of Complainant’s products.
Respondent registered and is using <guessoutletuk.com> in bad faith. The disputed domain name attracts internet users to Respondent’s website for commercial gain. Moreover, Respondent’s <guessoutletuk.com> sells counterfeit versions of Complainant’s products under Complainant’s GUESS mark, thereby disrupting Complainant’s business. Respondent registered <guessoutletuk.com> with actual knowledge of Complainant and its rights to the GUESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The two Complainants in this matter are Guess? IP Holder L.P. and Guess?, Inc., a clothing and goods manufacturer. These two companies collectively own the GUESS trademark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between Complainants, and will treat them all as a single entity in this proceeding. In this decision, Complainants will be collectively referred to as “Complainant.”
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <guessoutletuk.com> domain name.
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 manufacturer and retailer of men’s and women’s apparel, and related goods and services. Complainant uses the GUESS mark in conjunction with its business practices. Complainant registered the GUESS mark with USPTO (e.g., Reg. No. 1,433,022; registered Mar. 17, 1987). The consensus among panels is that registrations with USPTO are sufficient to show rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel determines that Complainant’s USPTO registrations are sufficient to show rights in the GUESS mark.
Complainant asserts that Respondent’s <guessoutletuk.com> is confusingly similar to Complainant’s GUESS mark because it incorporates the mark in its entirety, adding the generic term “outlet,” the geographic abbreviation “UK,” and the “.com” gTLD. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). Moreover, geographic designations or terms do not remove a domain name from the realm of confusing similarity. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015). The Panel concludes Respondent’s <guessoutletuk.com> is not adequately distinguishable from Complainant’s GUESS mark.
Complainant has proved this element.
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 (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 does not have any rights or legitimate interests in <guessoutletuk.com>. In support of its contention, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “ji zhou chen.” The respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Here, “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” and the Panel determines that Respondent is not commonly known by <guessoutletuk.com>.
Complainant argues it has not authorized or licensed Respondent to use the GUESS mark in any regard, nor is Respondent affiliated with Complainant. Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its assertion, Complainant demonstrates that Respondent’s <guessoutletuk.com> resolves to a website selling counterfeit versions of Complainant’s products. 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. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007). The Panel finds that “Respondent’s use of the confusingly similar domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),” or a legitimate non-commercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii). Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002).
Complainant has proved this element.
Complainant maintains that Respondent registered and is using <guessoutletuk.com> in bad faith. Complainant asserts that the disputed domain name attracts internet users to Respondent’s website for commercial gain. Moreover, Complainant argues that Respondent’s <guessoutletuk.com> sells counterfeit versions of Complainant’s products under Complainant’s GUESS mark, thereby disrupting Complainant’s business. 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. H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009). Likewise, the “[u]se of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).” Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015). Thus, the Panel concludes that Respondent registered and is using <guessoutletuk.com> in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant contends that Respondent registered <guessoutletuk.com> with actual knowledge of Complainant and its rights to the GUESS mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also argues that in light of the fame and notoriety of Complainant's GUESS mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 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 circumstances indicate that Respondent had actual knowledge of Complainant's GUESS mark when it registered <guessoutletuk.com> and the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessoutletuk.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 11, 2017
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