Guess? IP Holder L.P. and Guess?, Inc. v. Jerry D. Guess / WEB MASTER GUESS & CO. CORPORATION / CORPORATE AFFAIRS / THE GUESS CORPORATION
Claim Number: FA1806001794408
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California. Respondent is Jerry D. Guess / WEB MASTER GUESS & CO. CORPORATION / CORPORATE AFFAIRS / THE GUESS CORPORATION (“Respondent”), North Carolina.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guesscompanies.com>, <guessandcocorpfoundation.org>, <guesstelecom.com>, <guesstelecomwireless.com>, <theguesscorporation.info>, <theguesshealthcarecompany.com>, <theguessbreadcompanyltd.com>, <theguesschocolatecompanyltd.com>, <theguessconstructioncompanyltd.com>, <theguesscorporation.biz>, <theguesscorporationco.com>, <theguesscorporationfoundation.org>, <theguessprivateclubcompanyltd.com>, and <theguessprivatemerchantcompanyltd.com>, registered with eNom, LLC and/or Wild West Domains, 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 June 28, 2018; the Forum received payment on June 28, 2018.
On June 29, 2018, eNom, LLC confirmed by e-mail to the Forum that the <guessandcocorpfoundation.org>, <guesscompanies.com>, <guesstelecom.com>, <guesstelecomwireless.com>, <theguesscorporation.info>, and <theguesshealthcarecompany.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. On July 2, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <theguessconstructioncompanyltd.com>, <theguessprivatemerchantcompanyltd.com>, <theguessbreadcompanyltd.com>, <theguesscorporationfoundation.org>, <theguesschocolatecompanyltd.com>, <theguesscorporationco.com>, <theguesscorporation.biz>, and <theguessprivateclubcompanyltd.com> domain names are registered Wild West Domains, LLC and that Respondent is the current registrant of the names. eNom, LLC and Wild West Domains, LLC have verified that Respondent is bound by the eNom, LLC and Wild West Domains, LLC registration agreements 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 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@guesscompanies.com, postmaster@guessandcocorpfoundation.org, postmaster@guesstelecom.com, postmaster@guesstelecomwireless.com, postmaster@theguesscorporation.info, postmaster@theguesshealthcarecompany.com, postmaster@theguessbreadcompanyltd.com, postmaster@theguesschocolatecompanyltd.com, postmaster@theguessconstructioncompanyltd.com, postmaster@theguesscorporation.biz, postmaster@theguesscorporationco.com, postmaster@theguesscorporationfoundation.org, postmaster@theguessprivateclubcompanyltd.com, postmaster@theguessprivatemerchantcompanyltd.com. Also on July 10, 2018, 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 August 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS SUPPORTING THE 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 and services.
Respondent registered the subject domain names, which include Complainants' GUESS trademark along with the descriptive terms, such as "companies," "and," "co," "corp," "foundation," "company," etc. Respondent is not using any of these domain names in connection with a bona fide offering of goods and services, and has repeatedly used similar websites and domain names to defraud the public. This is clearly not a legitimate noncommercial or fair use. Respondent is clearly engaged in cybersquatting, apparently targeting Complainants, 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? is 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.
c) Relationship Between the Complainants
Guess? l.P. Holder L.P. is a Delaware limited partnership that is effectively wholly owned by Guess?, Inc.
i) Complainants' Rights in the Domain Name
The registrations list Guess?, Inc. as the owner of the trademark registrations submitted. Certain Guess-based trademarks and corresponding registrations from Guess?, Inc. were assigned to Guess? IP Holder L.P.
d) 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 (O.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 descriptive or generic terms to Complainants' GUESS Mark (guesscompanies.com: "companies;" guessandcocorpfoundation.org: "and," "co," "corp," and "foundation;" guesstelecom.com and guesstelecomwireless.com: "telecom" and "wireless;" theguesscorporation. info, theguesscorporation. biz, theguesscorporationco.com and theguesscorporationfoundation.org: "the," "corporation," and "co" or "foundation;" theguesshealthcarecompany.com, theguessbreadcompanyltd.com, theguesschocolatecompanyltd.com, and theguessconstructioncompanyltd.com: "the," "company," and "healthcare," "bread," "chocolate," or "construction," and "ltd;" theguessprivateclubcompanyltd.com and theguessprivatemerchantcompanyltd.com: "the," "private," "company," "ltd," and "club" or "merchant"). The addition of these descriptive terms does nothing to distinguish the domain names from Complainants' well-known mark pursuant to ¶4(a)(i) of the Policy. Guess? IP Holder L.P., FA 17737878, supra (finding domains guessandco.info, guessandco.org, guessandcoshareholder.info, theguessbreadcompany.com, theguessconstructioncompany.com, and theguessprivatemerchantcompany.com confusingly similar to Complainants' GUESS mark); see 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 (Nat. Arb. Forum Mar. 24, 2009) (finding lastcallsale.com and lastcallsale.net confusingly similar to complainant's LAST CALL mark pursuant to Policy 4(a)(i)); see also Gap, Inc. and its subsidiaries Banana Republic (Apparel),LLC and Banana Republic (Item), LLC v. Jan Cerny, Case No. FA 1718980 (Nat. Arb. Forum Apr. 3, 2017).
The terms "companies," "co," "corp," "corporation," "company," and "ltd" are all merely descriptive of Complainants' corporate status. Further, "foundation" is plainly descriptive of Guess's charitable activities and charitable organization, The GUESS Foundation. The generic terms "the" and "and" do nothing to distinguish the domain names from Complainants' trademark, particularly in view of their use with descriptive terms, such as those listed above. See Goldenvoice, LLC v. Alaa Moafy I the golden voice, FA 1763210 (Nat. Arb. Forum Jan. 15, 2018); see also Guess? IP Holder L. P. and Guess?, Inc. v. Donald Guess, FA 1732916 (Nat. Arb. Forum June 29, 2017).
Further, the incorporation of generic top-level domain names ("gTLD") ".com," ".org," ".info," or ".biz" into the subject domain names 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 (Nat. Arb. Forum Apr. 14, 2008). Thus, the addition of ".com," ".org," ".info," or ".biz" 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 names are confusingly similar to Complainants' trademarks.
e) Respondent Has No Rights Or Legitimate Interest In The Subject Domain Names
Respondent has no rights or legitimate interest in the subject domain names. Under the Policy, once the complainant asserts a prima facie case against the respondent, the 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 (Nat. Arb. 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 names.
i) Respondent Is Not Making A Bona Fide Offering Of Goods And Services At The Subject Domain Names
The Policy details several circumstances which, if proven, would support a finding that Respondent has a legitimate interest in the subject domain names. 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."
Here, each of the domain names either redirects to the website apps.rackspace.com, or contains no content. With regard to the inactive websites, such nonuse or "passive holding" of a domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i). Michelin North America, Inc. v. Energie Media Group, FA 451882 (Nat. Arb. Forum Aug. 7, 2012). In Michelin, the panel found that inactive use, or "passive holding," of the disputed domain name by a respondent "permits the inference that [the respondent] lacks rights and legitimate interests in the domain names." Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum Jul. 12, 2006) (finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i)); NIC Industries, Inc. v. Abadaba S.A., FA 448503 (Nat. Arb. Forum Jul. 17, 2012) (finding that respondent was not making a Policy 4(c)(i) bona fide offering of goods or services because respondent was not making an active use of the disputed domain name); Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent's non-use of a domain name that is identical to a complainant's mark is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)); Melbourne IT Ltd. v. Stafford, 02000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where the domain name did not resolve to a website, and respondent was not commonly known by the domain name).
With regard to the domain names that redirect to apps.rackspace.com, this is also not an active use of the domain names. The rackspace website has no actual content and does not appear to be associated with Respondent.
Further, Respondent has been engaged in a pattern of fraudulent business activities. The use of a domain name in furtherance of a fraudulent scheme has been found to support a finding of bad faith, and a lack of legitimate rights in the domain name. See, e.g., Airbnb, Inc. v. James Grant, FA 1760182 (Nat. Arb. Forum Dec. 28, 2017); Kimmeridge Energy Management Company, LLC v. Gustavo Alvarez, FA 1761058 (Nat. Arb. Forum Jan. 5, 2018); see also Guess? IP Holder L.P., FA 1773878, supra, (finding bad faith where "Jerry Guess was investigated, charged, and convicted of various criminal activity in connection with a former business, and ... Jerry Guess wanted to begin new business under a different name involving the GUESS mark"); see also Guess? IP Holder L.P. et al. v. Jerry Guess I Guess & Co. Corporation, FA 1784591 (Nat. Arb. Forum June 4, 2018) (same).
Accordingly, Respondent is not making a bona fide offering of goods and services at the subject domain names and therefore has no legitimate interest 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 any of the subject domain names. Respondent's name, as listed in the Whois information for the subject domain name is "Jerry D. Guess AND GUESS & CO. CORPORATION I WEB MASTER AND THE GUESS CORPORATION I CORPORATE AFFAIRS." See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
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 names. See Solstice Marketing Corp. v. Marc Salkovitz d/b/a Image Media, LLC, FA 040087 (Nat. Arb. 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, LLC v. George Rau, FA 308206 (Nat. Arb. 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 name.
iii) Respondent I s 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.
The subject domain names are currently being passively held by Respondent. Such non-use is not a legitimate noncommercial or fair use under 4(c)(iii) of the Policy. Thermo Electron Corp., supra (finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)); NIC Industries, Inc., supra (finding that the respondent was not making a legitimate noncommercial or fair use of the domain name because the respondent was not actively using the disputed domain name); Hewlett-Packard Co., supra (finding that a respondent's non-use of a domain name that is identical to a complainant's mark is not a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
Accordingly, the circumstances described in ¶4(c)(iii) of the Policy are also not present for the subject domain name.
f) Respondent Has Registered And Is Using The Subject Domain Name 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 the 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.
With respect to the subject domain names, Respondent's registration of six confusingly similar domain names to Complainants' GUESS Mark and his failure to make use of the domain names evidences Respondent's bad faith under Policy 4(a)(iii). Panels have consistently held that the non-use of a domain name that is confusingly similar to a complainant's mark constitutes use in bad faith. Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, 02000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); Michelin North, supra (concluding that respondent registered and used the disputed domain names in bad faith under Policy 4(a)(iii) where a printout from the resolving website indicated that respondent's websites were inactive, and there was no evidence the domain names were being used for any other purpose).
Further, as described in various articles relating to Respondent, Respondent has been engaged in a pattern of fraudulent business activities. The use of a domain name in furtherance of a fraudulent scheme has been found to support a finding of bad faith, and a lack of legitimate rights in the domain name. See, e.g., Airbnb, Inc., FA 1760182; Kimmeridge Energy Management Company, LLC v. Gustavo Alvarez, FA 1761058 (Nat. Arb. Forum Jan. 5, 2018).
Further, prior bad faith actions against a respondent may be used to evince bad faith under Policy 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA 1464081 (FORUM November 2, 2012) ("Respondent's past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy 4(b)(ii)."). Here, other panels have found that Respondent has registered similar domain names incorporating the GUESS marks in furtherance of a fraudulent scheme. See Guess? I Holder L.P. v. Joel Bandy, FA 1773878 ("The articles detail how Jerry Guess was investigated, charged, and convicted of various criminal activity in connection with a former business, and how Jerry Guess wanted to begin new business under a different name involving the GUESS mark. As such, the Panel agrees that Respondent has previously engaged in bad faith behavior, and holds that Respondent registered and used the disputed domain names in bad faith.") (internal citations omitted) and Guess? IP Holder L.P. v. Jerry Guess I Guess & Co. Corporation, FA 1784591 (Nat. Arb. Forum June 4, 2018) (same).
Even further, Respondent's knowledge of Complainant's GUESS Mark when it registered the subject domain names (as evidenced by Respondent's registration of multiple domain names that include Complainants' well-known GUESS Mark together with descriptive terms) also evidences his bad faith under the Policy. Moreover, "Respondent had constructive knowledge of Complainants' rights in their GUESS Mark due to Complainants' prior trademark registration of the GUESS Mark, and prior UDRP complaints filed against Respondent by Complainants. The registration of a confusingly similar domain name with constructive knowledge of a complainant's mark, without more, is evidence of bad faith registration and use of the domain name pursuant to ¶4(a)(iii) of the Policy. See Digi Int'/ v. DOI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); Orange Glo Int'/ v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Lastly, it is settled law that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection to the trademark owner supports a finding of bad faith pursuant to 4(a)(iii) of the Policy. See Household International, Inc. v. Cyntom Enterprises, FA 096784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that the respondent registered a well-known business name with hopes of attracting the complainant's customers).
Here, the subject domain names are confusingly similar to Complainants' GUESS Mark, and are obviously connected with Complainants. Further, the Respondent has no connection with Complainants. Accordingly, a finding of bad faith is also supported.
As Complainants have satisfied all three elements of the Policy, they request the Panel grant the requested remedy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The 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 Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Guess? IP Holder L.P. is owned (and controlled) by Guess?, Inc.
The Forum’s Supplemental Rule 1(e) allows 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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”). This Panel elects to treat the Complainants are one entity for UDRP purposes because of their licensor-licensee relationship.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 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 claims rights in the GUESS mark based upon its registration of the mark with the United States Patents and Trademark Office (“USPTO”). Registrations of a mark with a governmental authority, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant’s registration of the GUESS mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶4(a)(i).
Complainant claims the disputed domain names are confusingly similar to Complainant’s mark because they incorporate the mark in its entirety with the addition of generic terms and gTLDs. The addition of a generic term is not sufficient to distinguish a domain name from a mark under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Altria Group, Inc. and Altria Group Distribution Company v. HSH JKHK / HFHFD / Iftekar Shimon / 25 Level, FA 1732161 (Forum June 26, 2017) (“The Panel accepts that for the purposes of comparison the [‘.biz’ and ‘.com’] gTLDs can in this case be disregarded.”); see also Infineon Technologies AG v. mustafa mashari, FA 1619868 (Forum June 27, 2015) (“the addition of the “.info” gTLD is seen as irrelevant to its analysis”); see also ADESA, Inc. v. James Louis, FA 1736761 (Forum July 19, 2017) (“[T]he Panel finds that Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark.”). Respondent’s disputed domain names contain one or more of the following generic terms: “companies,” “co,” “corp,” “telecom,” “wireless,” “the,” “corporation,” “healthcare,” “company,” “bread,” “ltd,” “chocolate,” “construction,” “foundation,” “private,” “club,” and “merchant.” Respondent incorporates one of the following gTLDs: “.com,” “org,” “.info,” or “.biz.” Respondent’s domain names are confusingly similar to Complainant’s marks 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in the <guesscompanies.com>, <guessandcocorpfoundation.org>, <guesstelecom.com>, <guesstelecomwireless.com>, <theguesscorporation.info>, <theguesshealthcarecompany.com>, <theguessbreadcompanyltd.com>, <theguesschocolatecompanyltd.com>, <theguessconstructioncompanyltd.com>, <theguesscorporation.biz>, <theguesscorporationco.com>, <theguesscorporationfoundation.org>, <theguessprivateclubcompanyltd.com>, and <theguessprivatemerchantcompanyltd.com> domain names. Respondent is not commonly known by any of the disputed domain names. 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. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶4(c)(ii).”). When a respondent appears to be commonly known by the disputed domain name, it is required to provide affirmative evidence to support WHOIS information. See T Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information of record for the disputed domain names lists the registrant as “Jerry D. Guess / WEB MASTER GUESS & CO. CORPORATION / CORPORATE AFFAIRS / THE GUESS CORPORATION,” and no information on the record indicates Respondent is authorized or licensed to use the GUESS mark. It appears to this Panel Respondent is simply taking advantage of the fact his last name is the same as a famous mark…and that alone is not sufficient under the UDRP. By way of example, Respondent is not commonly known as guesscompanies.com (and so on through the list of disputed domain names). Respondent has not been commonly known by any of the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain names redirect users to an unrelated website or resolve to an inactive page. Using a disputed domain name to redirect users to an unrelated website or to an inactive page is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”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 <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). The disputed domain names’ resolving websites show either they are redirected to the <apps.rackspace.com/index.php> webpage or error pages that state “File not found (404 error)” or “This site can’t be reached.” Respondent failed to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii).
Complainant claims Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain names to engage in fraudulent activity or other illegal activity. Using a disputed domain name to engage in fraudulent activity (or other illegal activity) is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Complainant provided a blog article for “Jerry D Guess” to support its claim about Respondent’s checkered past. The Panel accepts this information because it was uncontroverted and was published. The Panel must conclude Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <guesscompanies.com>, <guessandcocorpfoundation.org>, <guesstelecom.com>, <guesstelecomwireless.com>, <theguesscorporation.info>, <theguesshealthcarecompany.com>, <theguessbreadcompanyltd.com>, <theguesschocolatecompanyltd.com>, <theguessconstructioncompanyltd.com>, <theguesscorporation.biz>, <theguesscorporationco.com>, <theguesscorporationfoundation.org>, <theguessprivateclubcompanyltd.com>, and <theguessprivatemerchantcompanyltd.com> domain names in bad faith. Specifically, Complainant claims Respondent’s past, adverse UDRP decisions indicates a pattern of bad faith. Policy ¶4(b)(ii) provides “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct;” Complainant can (and does) reflect is mark in a domain name, no matter how many domain names Respondent registers. Therefore, this Panel declines to find bad faith on this ground.
Complainant claims Respondent fails to make active use of six (6) of the disputed domain names and this demonstrates bad faith. Failure to actively use a disputed domain name demonstrates bad faith under Policy ¶4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”); see also Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii).”). While the most common use of a domain name is to host a website, there are other possible uses (such as an email server or an ecommerce backend). Respondent has not claimed to use the disputed domain names in any manner whatsoever. The disputed domain names’ resolving websites which show either redirection to the <apps.rackspace.com/index.php> webpage or error pages that state the error message “File not found (404 error)” or “This site can’t be reached.” Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent uses the disputed domain names to further its fraudulent business activities by suggesting an affiliation with Complainant. Using a disputed domain name to commit fraud constitutes bad faith under Policy ¶4(a)(iii). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith). The article about “Jerry D Guess” was enough to suggest this was a house of cards assembled by Respondent. While the “end game” may not be obvious to third parties (or even former employees), there was obviously fraud and not merely “rose colored glasses.” Respondent does not contend otherwise. Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant’s GUESS mark. It seems obvious Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names. Actual knowledge adequately proves bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent registered 14 domains containing Complainant’s mark in this case alone (16 domains over three cases). Respondent must have had knowledge of the GUESS mark given its prior UDRP decisions and its registration of the GUESS mark with various descriptive terms. In Guess? IP Holder L.P. and Guess?, Inc. v. Joel Bandy / Guess & Co. Corporation / Corporate Affairs / The Guess Bread Company, Ltd. / The Guess Construction Company, Ltd. / The Guess Private Merchant Company, Ltd., Claim Number: FA1802001773878 (Forum April 9, 2018), the panel held Jerry Guess had actual knowledge of the Guess Mark in light of its fame. In Guess? IP Holder L.P. and Guess?, Inc. v. Jerry Guess / Guess & Co. Corporation, Claim Number: FA1805001784591 (Forum June 4, 2018), a second panel held Jerry Guess had actual knowledge of the Guess Mark due to its fame. While Respondent registered the 16 disputed domain names in this case BEFORE those decisions were issued, this Panel agrees with their logic and finds Respondent had actual knowledge of Complainant’s mark due to its worldwide fame (especially considering Respondent’s location in North Carolina), demonstrating bad faith under Policy ¶4(a)(iii).
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 <guesscompanies.com>, <guessandcocorpfoundation.org>, <guesstelecom.com>, <guesstelecomwireless.com>, <theguesscorporation.info>, <theguesshealthcarecompany.com>, <theguessbreadcompanyltd.com>, <theguesschocolatecompanyltd.com>, <theguessconstructioncompanyltd.com>, <theguesscorporation.biz>, <theguesscorporationco.com>, <theguesscorporationfoundation.org>, <theguessprivateclubcompanyltd.com>, and <theguessprivatemerchantcompanyltd.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, August 7, 2018
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