Guess? IP Holder L.P. and Guess?, Inc. v. Tao Zhu
Claim Number: FA1902001829572
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 Tao Zhu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boutique-guess.net>, registered with Zhengzhou Zitian Network Technology Co., Ltd.
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 February 12, 2019; the Forum received payment on February 13, 2019.
On February 25, 2019, Zhengzhou Zitian Network Technology Co., Ltd confirmed by e-mail to the Forum that the <boutique-guess.net> domain name is registered with Zhengzhou Zitian Network Technology Co., Ltd and that Respondent is the current registrant of the name. Zhengzhou Zitian Network Technology Co., Ltd has verified that Respondent is bound by the Zhengzhou Zitian Network Technology Co., Ltd 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 March 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2019 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@boutique-guess.net. Also on March 1, 2019, 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 March 25, 2019, 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) Complainant is a two billion dollar multinational fashion retailer that has been selling clothing and accessories for over thirty years. Complainant has rights in the GUESS mark through its registration of the mark with the multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,433,022, registered Mar. 17, 1987) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g. Reg. No. 293554, registered July 20, 1987). See Compl. Ex. D. Respondent’s <boutique-guess.net> domain name is confusingly similar to Complainant’s mark as it fully incorporates Complainant’s GUESS mark and adds the deceptive term “boutique,” a hyphen, and the generic top-level domain (“gTLD”) “.net.”
ii) Respondent has no rights or legitimate interests in the <boutique-guess.net> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to sell counterfeit goods directly in competition with Complainant. See Compl. Ex. G.
iii) Respondent registered and uses the <boutique-guess.net> domain name in bad faith. Respondent uses the confusingly similar disputed domain name to redirect Internet users to Respondent’s website wherein Respondent sells counterfeit goods in competition with Complainant, disrupting Complainant’s business. See Compl. Ex. G. Respondent displays Complainant’s GUESS mark and other copyright protected photographs in an attempt to pass off as Complainant. Id. Respondent had actual and constructive knowledge of Complainant’s rights in the mark at the time of registration of the disputed domain name based on Respondent’s use of the GUESS marks and photographs on the resolving webpage and the fame of the GUESS mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the disputed domain name on July 11, 2017.
2. Complainant has established rights in the GUESS mark through its registration with the USPTO (e.g. Reg. No. 1,433,022, registered Mar. 17, 1987) and SAIC (e.g. Reg. No. 293554, registered July 20, 1987).
3. The resolving webpage of the disputed domain name purportedly offers counterfeit versions of Complainant’s goods and displays Complainant’s mark and photographs.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue 1: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent incorporates the English name corresponding to the Guess trademark and the word “boutique,” which has French roots but is also used in common English. Further, Complainant argues the disputed domain name is in French, suggesting that Respondent is conversant and proficient in languages other than Chinese. Finally, Complainant is not conversant or proficient in Chinese and would require translation of all documents into Chinese which would result in delays and unnecessary costs.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Preliminary Issue 2: Multiple Complainants
In the instant proceedings, there are two Complainants. 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.” 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. Complainant contends that Guess? IP Holder L.P. is a limited partnership effectively wholly owned by Guess?, Inc. to hold and license some, but not all, Guess trademark assets. Complainant asserts the activities of Guess? IP Holder L.P. are ultimately controlled by Guess?, Inc. through various other wholly owned entities. In this matter, Complainants claim they are related entities that constitute a single source of goods and services. See Compl. Ex. E
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.”
Complainant claims to have rights in the GUESS mark through its registration with the USPTO and SAIC. Registration of a mark with multiple trademark agencies is sufficient to establish rights in the mark. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Here, Complainant provides the Panel with copies of its registration with the USPTO (e.g. Reg. No. 1,433,022, registered Mar. 17, 1987) and SAIC (e.g. Reg. No. 293554, registered July 20, 1987). See Compl. Ex. D. Thus, the Panel finds Complainant has rights in the GUESS mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <boutique-guess.net> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s GUESS mark and adds the descriptive term “boutique,” a hyphen, and the gTLD “.net.” The addition of a descriptive term, a hyphen, and a gTLD is generally insufficient to distinguish a disputed domain name from a complainant’s mark. See Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark.
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 Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the GUESS mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the 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 for the disputed domain name lists the registrant as “Tao Zhu,” and there is no other evidence to suggest that Respondent was authorized to use the GUESS mark. See Compl. Ex. A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant contends Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <boutique-guess.net> domain name. Complainant argues Respondent instead diverts Internet users to Respondent’s website where Respondent sells counterfeit goods in competition with Complainant. Use of a disputed domain name to sell counterfeit versions of a complainant’s goods can demonstrate a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)). Complainant provides the Panel a screenshot of the resolving webpage of the disputed domain name purportedly offering counterfeit versions of Complainant’s goods. See Compl. Ex. G. Therefore, the Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (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 argues Respondent uses the disputed domain name to disrupt Complainant’s business by marketing counterfeit goods on the disputed domain name. Use of a disputed domain name to offer counterfeit versions of a complainant’s goods can be disruptive of a complainant’s business and demonstrate bad faith registration and use under Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). The Panel recalls Complainant provides screenshots of the resolving webpage of the disputed domain name purportedly offering counterfeit versions of Complainant’s goods. See Compl. Ex. G. Therefore, the Panel finds Respondent disrupts Complainant’s business and registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant contends Respondent attempts to pass off as Respondent by displaying Complainant’s GUESS mark and copyright protected photographs and this provides evidence of bad faith. Passing off as a complainant and offering goods or services in competition with a complainant can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel recalls Complainant’s provided screenshots of the resolving webpage of the disputed domain name which displaying Complainant’s mark and photographs as well as purportedly offering counterfeit versions of Complainant’s goods. See Compl. Ex. G. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant alleges Respondent had actual and constructive knowledge of Complainant’s rights in the mark at the time of registration. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that based off the fame of the GUESS mark and Respondent’s use of Complainant’s mark on the resolving webpage, Respondent had actual and constructive knowledge of Complainant’s rights in the mark. Therefore, the Panel infers, due to the fame of Complainant's mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the mark and finds this as evidence of bad faith under 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 <boutique-guess.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 29, 2019
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