Guess? IP Holder L.P. and Guess?, Inc. v. Takaaki Inoue / nesuto
Claim Number: FA1801001769716
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 Takaaki Inoue / nesuto (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-select.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2018; the Forum received payment on January 30, 2018. The Complaint was received in both Japanes and English.
On Febuary 1, 2018, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <guess-select.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 February 2, 2018, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of February 22, 2018 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-select.com. Also on February 2, 2018, the Japanese language 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 February 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the GUESS mark, is a multinational retailer of men’s and women’s apparel and related goods.
Complainant holds a registration for the GUESS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,370,424, registered July 25, 2000.
Respondent registered the domain name <guess-select.com> on July 10, 2017.
The domain name is confusingly similar to Complainant’s GUESS mark.
Respondent is not licensed or otherwise authorized to use Complainant’s GUESS mark.
Respondent has not been commonly known by the domain name.
Respondent does not make a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
Respondent employs the domain name to attempt to sell counterfeit versions of Complainant’s goods.
Respondent uses the domain name to seek commercial gain.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the GUESS mark when Respondent registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Preliminary Issue: Language of the Proceeding
The Registration Agreement governing the challenged domain name is cast in Japanese. In ordinary circumstances, Rule 11 accompanying the Policy dictates that this proceeding should therefore be conducted in Japanese. However, for cause shown, a different language may be substituted. In this instance, Complainant requests that the proceeding be conducted in English. In support of its request, Complainant invites attention to the fact that the disputed <guess-select.com> domain name is cast in English and that most of the text displayed at the website resolving from the domain name is likewise in English, which is evidence that Respondent is proficient in English. Complainant also asserts that it is not conversant in Japanese, and that if this proceeding were to be conducted in Japanese, Complainant would be required to produce Japanese translations of all relevant documents, which would entail undue costs and delay in the resolution of the dispute. Because Respondent does not contest any of Complainant’s assertions on this question, we determine that it would be reasonable to permit the proceeding to advance in English, and we so direct.
Preliminary Issue: Multiple Complainants
The Complaint filed in this proceeding identifies two enterprise Complainants: Guess? IP Holder L.P. and Guess?, Inc. The Complaint also alleges that the two enterprises collectively own the “Guess” brand and together operate the business done under that name and mark. Respondent does not oppose these assertions.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” And, for its part, 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.”
Supplemental Rule 1(e) has been found frequently to provide a basis for two related entities to proceed as a single Complainant in UDRP disputes. See, for example: Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006):
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.
Thus, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), a panel treated two entities as a single complainant where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between two complainants where there was a license between them regarding use of a specific mark.
Therefore, in light of the allegations of the Complaint, and in the absence of any objection from Respondent, we conclude that it is appropriate to permit the two named entities to proceed as a single Complainant for all purposes in this proceeding, and we so direct.
Complainant has rights in the GUESS service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of registration of that with a national trademark authority, the USPTO. See, for example, BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of a mark with the USPTO adequately proved its rights in that mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Japan). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <guess-select.com> domain name is confusingly similar to Complainant’s GUESS mark. The domain name contains the mark in its entirety, merely adding a hyphen and a descriptive term that can be taken to refer to an aspect of Complainant’s business, plus a generic Top Level Domain (“gTLD”). These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum August 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name were “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, created an “irrefutable confusing similarity” to complainant’s YETI mark). See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that adding a hyphen and a gTLD to the mark of another in creating a domain name is irrelevant for purposes of the Policy). This is because every domain name requires a gTLD, while a hyphen adds nothing of substance to a domain name, merely providing separation between its terms without intervention of an impermissible blank space.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <guess-select.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <guess-select.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the GUESS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as
“Takaaki Inoue / nesuto,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to use its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <guess-select.com> domain name to profit from the sale of counterfeit versions of Complainant’s goods. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name within the meaning of those subsections of the Policy. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum April 12, 2002):
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).
See also Keihin Corp. v. Youli Ltd., FA 1106190 (Forum December 18, 2007) (finding no rights or legitimate interests in a disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where a respondent used it to sell counterfeit versions of a UDRP complainant’s products).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the website resolving from the <guess-select.com> domain name to profit from selling counterfeit versions of Complainant’s goods disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017):
Respondent’s primary offering seem[s] to be counterfeits of Complainant’s … products. Respondent’s use of the … domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii).
And, because Respondent’s use of the domain name is an obvious attempt to confuse Internet users into believing that Complainant is affiliated with the domain name, the same behavior stands as proof of Respondent’s bad faith registration and use of it under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum October 23, 2008) (finding that a respondent’s attempt to profit by selling counterfeit products of a UDRP complainant through a website resolving from a domain name that was confusingly similar to the mark of that complainant demonstrated bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv)).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the GUESS mark when it registered the <guess-select.com> domain name. This further shows Respondent’s bad faith in registering the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007) (finding that a respondent registered a domain name in bad faith where a panel first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED. Accordingly, it is Ordered that the <guess-select.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 8, 2018
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