Guess? IP Holder L.P. and Guess?, Inc. v. kei bo
Claim Number: FA1811001815026
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 kei bo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-factory.org>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2018; the Forum received payment on November 5, 2018.
On November 6, 2018, 1API GmbH confirmed by e-mail to the Forum that the <guess-factory.org> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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-factory.org. Also on November 9, 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 December 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainants, Guess? IP Holder L.P. and Guess?, Inc. (collectively, “Complainant”), own the world-famous GUESS brand, which it has used for over 30 years in connection with its highly successful lines of men’s and women’s apparel and related goods. Complainant has rights in the GUESS mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,433,022, registered March 17, 1987). See Compl. Ex. D. Respondent’s <guess-factory.org> domain name is confusingly similar to Complainant’s GUESS mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic and/or descriptive term “factory,” a hyphen, and the “.org” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <guess-factory.org> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the GUESS mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to offer for sale unauthorized or counterfeit goods. See Compl. Ex. G.
iii) Respondent registered and is using the <guess-factory.org> in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it offers for sale unauthorized or counterfeit goods. See Compl. Ex. G. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the GUESS mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on July 13, 2018.
2. Complainant has established rights in the GUESS mark based upon its registration with the USPTO (Reg. No. 1,433,022, registered on March 17, 1987).
3. The disputed domain name’s resolving website displays Complainant’s marks and includes copyright protected photographs owned by Complainant.
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."
Preliminary Issue : Multiple Complainants
There are two Complainants in this matter: Guess? IP Holder LP and Guess?, Inc. Complainant Guess ? IP Holder LP is a Delaware limited partnership that is effectively wholly owned by Complainant, Guess ?, Inc. See Deedwania Decl., Ex. E.
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.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated: "it has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity."
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.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the GUESS mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the GUESS mark (e.g. Reg. No. 1,433,022, registered March 17, 1987). See Compl. Ex. D. Therefore, the Panel holds that Complainant’s registration of the GUESS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <guess-factory.org> domain name is confusingly similar to Complainant’s GUESS mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic and/or descriptive term “factory,” a hyphen, and the “.org” gTLD. Additions to a complainant’s mark such as a generic and/or descriptive term, a hyphen and a gTLD do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). Therefore, the Panel determines the <guess-factory.org> domain name is confusingly similar to the GUESS mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have 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 argues that Respondent has no rights or legitimate interests in the <guess-factory.org> domain name. Specifically, Complainant contends Respondent is not authorized or licensed to use Complainant’s GUESS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). 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).”). Additionally, lack of authorization to use a complainant’s mark may indicate that a respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record for the disputed domain name lists the registrant as “kei bo,” and no information on the record indicates that Respondent is authorized or licensed to use the GUESS mark. See Amend. Compl. Ex. A. The Panel therefore finds that Respondent has not been commonly known by the <guess-factory.org> domain name under Policy ¶ 4(c)(ii).
Complainant further argues Respondent fails to use the <guess-factory.org> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer for sale unauthorized or counterfeit goods. Use of domain name to offer for sale unauthorized or counterfeit goods 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 The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use); see also Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides a screenshot of the disputed domain name’s resolving website which displays Complainant’s marks and includes copyright protected photographs owned by Complainant. See Compl. Ex. G. Therefore, the Panel agrees that Respondent failed to use the <guess-factory.org> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims Respondent registered and uses the disputed domain name in bad faith. Specifically, Complainant argues Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it offers for sale unauthorized or counterfeit goods. Use of a domain name to offer for sale counterfeit goods can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the domain name to sell the complainant’s products that were either counterfeit or genuine products resold without authorization); see also Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). The Panel recalls that Complainant provides a screenshot of the disputed domain name’s resolving website which displays Complainant’s marks and includes copyright protected photographs owned by Complainant. See Compl. Ex. G. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent had constructive and/or actual knowledge of Complainant’s GUESS mark and Complainant’s rights because of Complainant’s prior registration of the mark. However, the Panel does not accept Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel infers due to the notoriety of the Complainant's mark and the manner of use of the disputed domain name that Respondent had actual knowledge and finds that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guess-factory.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 4, 2018
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