Guess? IP Holder L.P. and Guess?, Inc. v. I S / ICS INC / GEORGE WASHERE / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1711001758582
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 I S / ICS INC / GEORGE WASHERE / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guessincreailjobs.com>, <guessincreatiljobs.com>, <guesssincretailjobs.com>, and <guessretailjobsinc.com>, registered with GoDaddy.com, LLC; eNom, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 14, 2017.
On Nov 15, 2017; Nov 16, 2017, GoDaddy.com, LLC; eNom, LLC confirmed by e-mail to the Forum that the <guessincreailjobs.com>, <guessincreatiljobs.com>, <guesssincretailjobs.com>, and <guessretailjobsinc.com> domain names are registered with GoDaddy.com, LLC; eNom, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC; eNom, LLC has verified that Respondent is bound by the GoDaddy.com, LLC; eNom, 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 November 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@guessincreailjobs.com, postmaster@guessincreatiljobs.com, postmaster@guesssincretailjobs.com, postmaster@guessretailjobsinc.com. Also on November 21, 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 December 10, 2017.
On December 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS SUPPORTING COMPLAINANTS
Complainants, Guess? IP Holder L.P. and Guess?, Inc. (collectively "Complainants" or "Guess?"), own the world-famous GUESS brand which they have used for over 30 years in connection with their highly successful lines of men's and women's apparel and related goods (including perfume).
Respondent registered the subject domain names, which includes Complainants' GUESS trademark along with the descriptive terms "inc," "retail" (or variations thereof), and "jobs." These domain names are used to unlawfully misdirect consumers looking for Complainants' website to a commercial parking website which hosts pay-for-click advertisements. Respondent is clearly engaged in cybersquatting and the subject domain names should be transferred to Complainants.
a) Complainants' Company
Guess? started in 1981 as a small California jeans company. Notwithstanding its humble beginnings, Guess? has developed into a global lifestyle brand. While jeans remain the foundation of the company's history and success, Guess? designs, markets, and distributes its full collections of women's and men's apparel throughout the United States, Canada, and worldwide. Background information about Guess?, available at guess.com. The company has successfully granted licenses for the manufacture and distribution of many of its product categories, including kids & baby apparel, watches, footwear, belts, fragrance, jewelry, swimwear, handbags, small leather goods, eyewear, and leather apparel. Guess? has licensees and distributors in the United States, Europe, South America, Asia, Africa, and the Middle East.
In the early 1980's, Guess? quickly infiltrated popular culture and became an icon of the generation. Guess? created groundbreaking advertising campaigns featuring sexy, sultry models previously unknown in the industry, and turned them into superstars overnight. Models such as Claudia Schiffer, Carre Otis, Eva Herzigova, Laetitia Casta, Carla Bruni, and Naomi Campbell launched their careers in the original Guess? campaigns.
With striking images and fresh new products, Guess? gained momentum and nationwide recognition. In the 1980's, the Guess? product line expanded beyond men's and women's jeans to include baby apparel, watches, footwear, eyewear, and parfum. The 1990's saw rapid international expansion, bringing Guess? to Europe, Asia, South America, Africa, Australia, and the Middle East.
In the mid-1990's, Guess? became a public company and launched its first website at the domain name guess.com. Guess? now operates websites at the domain names guess.com, gbyguess.com, marciano.com, and guess.ca. In 1995, Complainants expanded their retailing business by launching an e-commerce website at guess.com. The e-commerce website displays photographs of Guess?'s famous models and operates as a virtual storefront that sells both Guess?'s products and promotes Complainants' brands. The website also provides fashion information and a mechanism for customer feedback while promoting customer loyalty and enhancing Guess?'s identity through interactive content.
Today, Guess? is a two billion dollar multinational retailer. Guess? sells clothing and accessories to enhance the casual lifestyle of people with a flair for individualism. In 2012, Guess? celebrated 30 years in the fashion industry.
b) Complainants' Rights in the GUESS Mark
As a result of more than 30 years of use, Complainants have created in their GUESS trademark one of the most famous and distinctive marks in retailing. Guess? owns and uses a multitude of GUESS trademarks and service marks (collectively, the "GUESS Mark"). The GUESS Mark has acquired a valuable goodwill and reputation, and is widely recognized by the consuming public as a designation of source of the goods and services of Guess?, not only in the United States but throughout the world. Complainants, along with their distributors and licensees, now operate over 1,300 stores located in premier retailing locations in major markets worldwide. Additionally, billions of dollars of sales have been made in connection with the GUESS Mark over the past 30 years.
In addition to their exceptionally strong common law trademark rights, Guess? owns numerous Trademark Registrations for their GUESS Mark throughout the world. A table listing some of the relevant registrations in the United States, and the corresponding United States Trademark Certificates of Registration are attached to this Complaint.
c) The Subject Domain Names Are Confusingly Similar To Complainants' GUESS Mark
To support a finding that a subject domain name is identical or confusingly similar to a complainant's mark, all that is required is:
that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.
Awesome Kids LLC v. Selavy Comm., 02001-0210 (WIPO Apr. 16, 2001); see also Jews for Jesus v. Brodsky, 993 F.Supp. 282, 296 (D.N.J.), aff'd, 159 F.3d 1351 (3d Cir. 1998) (holding JEWS FOR JESUS and jewsforjesus.org confusingly similar).
The subject domain names are confusingly similar to Complainants' GUESS Mark. Each of the domain names features Complainants' entire GUESS Mark as the dominant portion of the domain name, and merely adds the descriptive terms "inc," "retail," (or variations thereof) and "jobs" to Complainants' GUESS Mark. The addition of these descriptive terms does nothing to distinguish the domain names from Complainants' mark pursuant to 4(a)(i) of the Policy. Parfums Christian Dior v. 1 Netpower, Inc. 02000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or cosmetics" after the trademark were confusingly similar to the trademark) ; The Neiman Marcus Group, Inc. et al. v. Rosanna Silverio, FA 246433 (Forum Mar. 24, 2009) (finding lastcallsale.com and lastcallsale.net confusingly similar to complainant's LAST CALL mark pursuant to Policy 4(a)(i)); Chan Luu Inc. v. big trade, FA 1464057 (Forum Nov. 8, 2012) (finding the domain name chanluu-shop.com confusingly similar to the CHAN LUU Mark under Policy ¶4(a)(i)).
The term "inc" is merely descriptive of Complainants' corporate status and is an abbreviation of "incorporated." The term "retail" (or "reail" or "reatil," each of which is a deliberate misspelling of "retail") is merely descriptive of Complainants' retailing services (i.e., a shop that sells GUESS goods). The term "jobs" is a generic term for employment or employment opportunities. Complainants' GUESS Mark is extensively used in connection with employment opportunities in the retail business sector for GUESS branded retail stores selling GUESS branded clothing and accessories . Therefore, the addition of the terms "inc" and "retail" (or "reail" or "reatil") and "jobs" further increases the confusing similarity of the subject domain name with Complainants ' GUESS Mark. See Chan Luu Inc., supra; Vans, Inc. v. tang sheng, FA 379964 (Forum Apr. 20, 2011) (holding vansshoesoutlet.com confusingly similar under the Policy because the addition of the generic terms "shoes" and "outlet" to Complainant 's VANS mark failed to distinguish the disputed domain name from complainant's mark).
Further, the incorporation of the generic top-level domain name ("gTLD") ".com" into the subject domain name is irrelevant to the confusingly similar analysis. See Dermalogica, Inc. and The International Dermal Institute, Inc. v. Andrew Porter and Zen Day Spa, FA 1155710 (Forum Apr . 14, 2008). Thus, the addition of ".com," is insufficient to avoid a finding of confusing similarity between the subject domain name and the GUESS Mark.
Accordingly, both applicable case law and prior administrative proceedings support a finding that the subject domain name is confusingly similar to Complainants' trademarks.
d) Respondent Has No Rights Or Legitimate Interest In The Subject Domain Names
Respondent has no rights or legitimate interest in the subject domain name. Under the Policy, once Complainant asserts a prima facie case against Respondent , Respondent bears the burden of proving that he has rights or legitimate interests in the subject domain name pursuant to ¶4(a)( ii) of the Policy. See G.D. Searle & Co. v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002); Do The Hustle, LLC v. Tropic Web, 02000-0624 (WIPO Aug . 21, 2000) .
Complainants have not licensed Respondent to use their GUESS Mark, nor does Respondent have any legal relationship with Complainants that would entitle Respondent to use Complainants' mark. Respondent has no legitimate reason for using the GUESS Mark as the dominant part of the subject domain name.
i) Respondent Is Not Making A Bona Fide Offering Of Goods And Services At The Subject Domain Name
The Policy details several circumstances which, if proven, would support a finding that Respondent has a legitimate interest in the subject domain name. For instance, Respondent could have rights under ¶4(c)(i) of the Policy if "before any notice to respondent of the dispute," Respondent uses or prepares to use "the domain name[s] in connection with a bona fide offering of goods or services."
In this case, however, Respondent's infringing use of the subject domain names cannot constitute a bona fide offering of goods and services under the Policy. Screen captures showing Respondent's use of the subject domain names to host nearly identical parking pages populated by pay-per-click advertisements for services listing retail jobs at retail stores that compete directly with complainants (e.g., retail stores featuring clothing and clothing accessories) is attached to this Complaint.
It is well settled that the use of a domain name to host a parking page populated by pay-per-click advertisements does not constitute a bona fide offering of goods or services . Hard Rock Cafe International (USA), Inc. v. Ryhan Estate Vineyards, FA 35573 (Forum Jan. 14, 2009) (use of a confusingly similar domain name to resolve to a website displaying third-party links to unrelated websites is not a "a bona fide offering of goods and services") ; see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Forum Sep. 8, 2000) (finding that Respondent's website , which is blank but for links to other websites, is not a legitimate use of the domain names).
Accordingly, Respondent is not making a bona fide offering of goods or services at the subject domain names and therefore has no legitimate interest in the domain names under the circumstances described in ¶4(c)(i) of the Policy.
ii) Respondent Is Not Commonly Known By The Subject Domain Name
A respondent's claim of rights or legitimate interests may also be supported by 4(c)(ii) of the Policy when the party has "been commonly known by the domain name," even if no trademark or service mark rights have been acquired. In this case, Respondent is not commonly known by the subject domain name. Respondent's name, as listed in the Whois information for the subject domain name is '"'I S I ICS INC I GEORGE WASHERE I DOMAIN MAY BE FOR SALE, CHECK AFTERNIC .COM Domain Admin I Domain Registries Foundation."
Further, Complainants have not given Respondent permission to use their GUESS Mark. Respondent's unauthorized use of Complainants' registered service mark and trademarks supports a lack of rights and legitimate interests in the subject domain name. See Solstice Marketing Corp. v. Marc Salkovitz dlbla Image Media, LLC, FA 040087 (Forum Aug. 31, 2007) (respondent was not commonly known by the disputed domain name because, in part, respondent lacked authorization to use complainant's registered service mark); see also American Girl, LLV v. George Rau, FA 308206 (Forum Apr. 2, 2010) (respondent was not commonly known by the disputed domain name when respondent was "not licensed or otherwise authorized to use" complainant's mark).
Accordingly, Respondent cannot defend under 4(c)(ii) of the Policy by claiming that he/she is known by the subject domain names.
iii) Respondent Is Not Making Legitimate Noncommercial Or Fair Use Of The Subject Domain Name
Another circumstance that would support a respondent's claim of rights or legitimate interest is detailed in ¶4(c)(iii) of the Policy, which states:
you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to these circumstances, Respondent is making a plainly commercial use of the contested domain names that is confusingly similar to Complainants' GUESS Mark. As screenshots demonstrate, the domain names are being used to host commercial advertisements and revenue-generating links, including links directing to websites featuring job advertisements for commercial retail listings for retail stores that directly compete with Complainants. Accordingly, the circumstances described in Policy ¶4(c)(iii) are not present.
Lastly, the unlawful registration and use of a domain name reflecting another's trademark is not a protected use under the Policy. Viacom International, Inc. et al. v. TVdot.net, Inc., D200-1253 (WIPO Jan. 16, 2001) ("[The] illegal use of another's trademark cannot be considered a bona fide use"). In view of Complainants' well-known GUESS Mark, this commercial use by Respondent clearly violates Complainants' rights under Section 43(a) of the Lanham Act.
Accordingly, under the laws of the United States and guiding Policy decisions, Respondent cannot show any legitimate interest in the contested domain names.
e) Respondent Has Registered And Is Using The Subject Domain Names In Bad Faith
The Policy expressly details specific circumstances which, "if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith." (Policy ¶4(b)). Any one of these express circumstances is sufficient to establish bad faith.
A first circumstance applicable here is detailed in ¶4(b)(iv) of the Policy, which states that
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It is well settled that the use of a domain name that is identical or confusingly similar to a complainant's mark to host a parking page is evidence of bad faith. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv)); see also Constellation Wines U.S., Inc. v. Tex. Int'/ Prop. Assocs., FA 948436 (Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with Complainant because Respondent was redirecting Internet users to a website with links unrelated to Complainant and likely receiving click-through fees in the process).
Here, Respondent is using the subject domain names, which are confusingly similar to Complainants' famous GUESS Mark, to display links to various third-party websites that direct to websites featuring job advertisements for commercial retail listings for retail stores that directly compete with Complainants. Just as in Williams-Sonoma, Constellation Wines, and countless other decisions, Respondent's use clearly falls within ¶4(b)(iv) and thus satisfies the bad faith prong of the Policy.
Finally, it is well settled that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner supports a finding of bad faith under the Policy. America Online, Inc. v. Shenzhen JZT Computer Software Co., Ltd., 02000-0809 (WIPO Sep. 6, 2000); Deutsche Bank AG v. Diego-Arturo Bruckner, 02000-0277 (WIPO May 30, 2000) ("The domain name is so obviously connected with Complainant and its services that its very use by someone with no connection with Complainant suggests opportunistic bad faith."); FAQ Schwarz v. John Zuccarini, FA95828 (Forum Dec. 1, 2000); Household International, Inc. v. Cyntom Enterprises, FA95784 (Forum Nov. 7, 2000) (inferring that Respondent registered a well-known business name with hopes of attracting Complainant 's customers) ; Woolworths pie. v. David Anderson , 02000-1113 (WIPO Oct. 10, 2000) . In the present case, Respondent registered the domain names, which are each a clear infringement of Complainants' GUESS Mark. Because the GUESS Mark is so obviously connected with Complainants, and because the domain name so clearly references Complainants and the retail industry (namely, "Guess Inc. Retail Jobs"), the registration and use of the domain names by Respondent, who has no connection with Complainants evidences bad faith under the Policy. Accordingly , a finding of bad faith is also supported on these grounds.
As Complainants have satisfied all three elements of the Policy, they request the Panel grant the requested remedy.
B. Respondent
Respondent hereby responds to the statements and allegations in the Complaint as follows:
• Voluntary Transfer of the Domain Name
Respondent, a foreign company, owns a portfolio of generic and descriptive domain names which it acquired through lawful and fair methods. As part of its business practice, it has a well-known dispute resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe violate a trademark. And, it has a liberal transfer policy whereby it typically agrees to voluntarily transfer domain names, irrespective of the legitimacy of Complainant’s arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings. Transfers are typically done within one (1) business day.
Upon learning of this matter and, pursuant to its business practices, in an effort to resolve this matter expeditiously and without a substantial investment of time and expense by either party or the Panel, Respondent contacted Complainant to offer a voluntary transfer of the domain name at issue. Complainant did not respond to this offer.
Therefore, without admitting fault or liability and without responding substantively to the allegations raised by Complainant herein, to expedite this matter for the Panel so that its time and resources are not otherwise wasted on this undisputed matter, Respondent stipulates that it is willing to voluntarily transfer the Domain Name to Complainant. For the reasons stated below, Respondent respectfully requests that the transfer be ordered without findings of fact or conclusions as to Policy 4(a) other than the Domain Name be transferred.
In numerous prior UDRP decisions, Panels have consistently ruled that when a complaint has been filed and Respondent consents to the transfer of the domain name, it is inappropriate to issue any decision other than simply ordering the transfer of the domain name. Such panels consistently hold that it would be improper to issue any findings of fact in such cases. For example, in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the Panel stated as follows:
[T]his Panel considers that a genuine unilateral consent to transfer by Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.
Where Complainant has sought transfer of a disputed domain name, and Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see: Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).
In The Body Shop International plc v. Agri, Lacus & Caelum LLC, FA 679564 (FORUM May 25, 2006), the complaint set forth allegations and requested that the domain name be transferred to complainant. Respondent therein, after the deadline for a response, filed a stipulation agreeing to the transfer of the domain name to Complainant. The panel limited its decision to an order that the domain name be transferred. Regarding the stipulation, the panel stated the following:
Consistent with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot issue a decision that would be either less than requested, or more than requested by the parties. Because both Complainant and Respondent request the transfer of the disputed domain name to Complainant, the Panel must recognize the common request of the two parties. See: Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum, Jan. 13, 2004) (“Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev., FA 133625 (Forum, Jan. 9, 2003); see also Alstyle Apparel/Active Wear v. Schwab, FA 170616 (Forum, Sept. 5, 2003).”
Other panels have gone further to state that it would be unwise to issue findings of fact or conclusions other than an order transferring the name:
Indeed, it would be unwise to make any other findings [other than the transfer] in case the same issues were to arise in later proceedings. Accordingly, the Panel will not make any findings of fact or compliance or otherwise, but will make the only order that is appropriate in the circumstances, which is an order for the transfer of the domain name to Complainant.
Diners Club International Ltd. v Nokta Internet Technologies, FA 720824 (FORUM August 2, 2006).
Numerous other panels have followed the principle noted above in circumstances similar to the ones here including:
3. Navy Federal Credit Union v. Domain May Be For Sale, Check Afternic.com (Domain Admin / Domain Registries Foundation), FORUM Case No. FA1708001743401
4. U.S. Smokeless Tobacco Company, LLC v. Domain May Be For Sale, Check Afternic.com (Domain Admin / Whois Foundation), FORUM Case No. FA1603001666791.
5. Anadarko Petroleum Corp. v. Admin Contractor, SOL Invictus Comiti LP / Domains by Proxy, LLC, WIPO Case No. D2014-1664.
6. BHP Billiton Innovation Pty Ltd. v. Domain Admin, c/o Legal Consulting & Incorporations / WhoIs Foundation, WIPO Case No. D2014-2060.
7. Infoglobo Comunicacao e Participacoes S.A. v. Admin, Oversee Domain Management LLC, WIPO Case No. D2011-1378.
8. Atmos Energy Corp. v. Chesterton Holdings, LLC, WIPO Case No. D2007-1793.
9. SYTrading Post, Inc., v. OS Domain Holdings IV, LLC, WIPO Case No. D2008-0815.
10. The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132.
11. Deutsche Bank AG v. Seigler, WIPO Case No. D2000-0984.
12. Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.
13. Vacation Pubs., Inc. v. Portfolio Brains, LLC, FORUM Case No. FA1139522.
14. Int’l Edge, Inc. v. Oversee Research and Dev., LLC, FORUM Case No. FA1144130.
15. Kohler Co. v Wesley Atkins aka Default Profile aka N/A:2c67phrv, FORUM Case No. FA760086.
16. Herbalife Int’l of Am., Inc., a wholly owned subsidiary of Herbalife Int’l, Inc. v. Montanya Ltd., FORUM Case No. FA733012.
17. Diners Club Int’l Ltd. v. Nokta Internet Tech., FORUM Case No. FA720824.
18. Norgren, Inc. v. Norgren, Inc., FORUM Case No. FA670051.
19. Disney Enters., Inc. v. Morales, FORUM Case No. FA475191.
20. Met. Life Ins. Co.and Met. Prop. and Cas. Ins. Co. v. Gaines Enter., FORUM Case No. FA474807.
21. PSC Mgt. Ltd. Partnership v. PSC Mgt. Ltd. Partnership, FORUM Case No. FA467747.
22. MICROS Sys., Inc. v. Walkercity, FORUM Case No. FA444485.
23. Enterprise Rent-A-Car Co. v. Harold Almon, FORUM Case No. FA422884.
24. Lake Receptions, Inc. v. Richard Kelsey, FORUM Case No. FA404428.
25. Tech Int’l, Inc. d/b/a Health Tech v. Clear Choice of New York, FORUM Case No. FA372828.
26. Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FORUM Case No. FA212653.
27. Alstyle Apparel/Active Wear v. Schwab, FORUM Case No. FA170616.
28. Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev., FORUM Case No. FA133625.
Accordingly, Respondent requests that the Domain Name be transferred to Complainant without further findings of fact or liability, including those related to the elements set forth in Paragraph 4(a) UDRP Policy.
Preliminary Issue: Consent to Transfer
Respondent claims to have consented to transfer the <guessincreailjobs.com>, <guessincreatiljobs.com>, <guesssincretailjobs.com>, and <guessretailjobsinc.com> domain names to Complainant. No evidence of this fact was produced by either party. Apparently, Complainant never responded to this offer, but started a UDRP proceeding. The Panel does not know why.
After the initiation of this proceeding, GoDaddy.com, LLC; eNom, LLC placed a hold on Respondent’s account. The parties can mutually agree to release the hold so the disputed domain names can be transferred from Respondent to Complainant without the necessity of a proceeding (which is a relatively new procedure). That did not happen. The Panel does not know why.
Complainant has not consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel. The “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel may decide that it would like to analyze the case under the elements of the UDRP.
(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.
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 prove the following three elements to obtain an order transferring or cancelling a domain name:
(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.
Complainant claims rights in the GUESS mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,433,022, registered Mar. 17, 1987). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country (Panama in this case). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has established its rights in the GUESS mark.
Complainant claims Respondent’s <guessincreailjobs.com>, <guessincreatiljobs.com>, <guesssincretailjobs.com>, and <guessretailjobsinc.com> domain names are confusingly similar to Complainant’s mark because each of them wholly incorporates the GUESS mark, adds the descriptive terms “inc,” “retail,” (or variations thereof) and “jobs,” as well as the “.com” gTLD. Generally, adding generic or descriptive terms are not sufficient changes to adequately differentiate a disputed domain name from a mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Similar changes in a domain name have failed to sufficiently distinguish a registered mark for the purposes of Policy ¶4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained Complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The <guessincreailjobs.com>, <guessincreatiljobs.com>, <guesssincretailjobs.com>, and <guessretailjobsinc.com> domain names are confusingly similar to the GUESS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to 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 claims Respondent is not commonly known by the disputed domain names. WHOIS information and any other assertions by a complainant regarding authorization to use a mark can aid in determining if a respondent is commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that 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 Respondent was commonly known by the domain names, and Complainant had not authorized Respondent to register a domain name containing its registered mark). Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. The current WHOIS identifies “I S / ICS INC; GEORGE WASHERE; DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation; I S / ICS INC” as the registrants of the disputed domain names. There is no evidence to show Respondent has ever been legitimately known by the GUESS mark (and Respondent has not disputed this). Panels may use these assertions as evidence of the lack of rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain names prior to their registration, and Complainant has not given Respondent permission to use its mark in a domain name. Respondent, a Panamanian company, owns a portfolio of generic and descriptive domain names which it acquired (presumably though some kind of automated processes) with the hope of reselling them. Respondent is clearly not commonly known by the <guessincreailjobs.com>, <guessincreatiljobs.com>, <guesssincretailjobs.com>, and <guessretailjobsinc.com> domain names under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the disputed domain names in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use. Respondent hosts nearly identical parking pages populated by pay-per-click advertisements for services listing retail jobs at retail stores. Presumably, the revenues from these advertising links pay for the registration and hosting of the domain names (and other incidental business expenses). Using a disputed domain name to host third-party links that directly compete with a complainant’s business does not constitute a bona fide offer under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that Respondent’s use of a confusingly similar domain name to advertise real estate services which competed with Complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); see also McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶4(c)(iii).”). Respondent failed to use the disputed domain names pursuant to Policy ¶¶4(c)(i) & (iii) and lacks rights and legitimate interests in the disputed domain names.
Furthermore, Respondent registered the disputed domain names using a privacy service. This means Respondent has done nothing to publicity associate itself with the disputed domain names. Therefore, Respondent could not have acquired any rights to the disputed domain names by simply registering them.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent utilizes domain names that are confusingly similar to Complainant’s GUESS mark to host parking pages displaying links to various competing third-party websites. Hosting parked pages displaying pay-per-click links to a complainant’s competitors is sufficient for a finding of bad faith under Policy ¶4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that Respondent’s use of the <capitaloneonebank.com> domain name to display links to Complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶4(b)(iv)). Complainant provided adequate screenshot evidence Respondent uses the links to direct to websites featuring job advertisements for commercial retail listings for competing retail stores. Respondent acted in bad faith pursuant to Policy ¶4(b)(iv).
Policy ¶4(b)(i) provides bad faith will be found if “…you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”. The landing pages of <guessincreailjobs.com>, <guessincreatiljobs.com>, and <guessretailjobsinc.com> are clearly marked “Domain Sale click here to buy now +1 855 646 1390.” When the WHOIS privacy feature was dropped on <guessincreailjobs.com>, <guessincreatiljobs.com>, and <guessretailjobsinc.com>, the registered names clearly indicate the domain names were acquired with the intention of reselling them because the owner’s name includes “DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM” (although this fact would not be available to the general public before this proceeding began). It seems clear Respondent purchased at least these three domain name with the intention of reselling them. Complainant is clearly within the anticipated class of prospective purchasers. Respondent admits it purchases “generic and descriptive” domain names in its answer. Presumably, this is done so Respondent can sell them at a profit. Respondent would have to sell them for more than Respondent’s purchase price to stay in business. It seems clear Respondent registered and used at least these three domain names in bad faith.
Finally, Respondent registered all of the disputed domain names using a WHOIS privacy service. In the commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Therefore, the Panel is comfortable in finding all four disputed domain names were registered and used in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <guessincreailjobs.com>, <guessincreatiljobs.com>, <guesssincretailjobs.com>, and <guessretailjobsinc.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 13, 2017
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