Guess? IP Holder L.P. and Guess?. Inc. v. xiuzhen xian
Claim Number: FA1308001513042
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is xiuzhen xian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyguessonline.com>, registered with eNom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2013; the National Arbitration Forum received payment on August 2, 2013.
On August 5, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <buyguessonline.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 August 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2013 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@buyguessonline.com. Also on August 6, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <buyguessonline.com> domain name on October 31, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Guess? IP Holder L.P. and Guess?. Inc., uses the GUESS mark to sell clothing apparel and related goods. Complainant has registered the GUESS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022 registered on March 17, 1987).
Respondent, xiuzhen xian, registered the <buyguessonline.com> domain name on October 31, 2012. Respondent uses the <buyguessonline.com> domain name to sell competing and counterfeit goods under the GUESS mark. Policy ¶ 4(a)(iii)
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(e), 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 (Nat. Arb. 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 has rights in the GUESS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (complainant had established rights in the BLOOMBERG mark through registration with the USPTO).
Complainant next argues that Respondent has registered the confusingly similar <buyguessonline.com> domain name. Respondent added the generic terms “buy” and “online” and the gTLD “.com” to the GUESS mark in forming this domain name. The addition of the gTLD is irrelevant to this analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The addition of generic terms to a trademark does not prevent a finding of confusing similarity. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (the addition of common and generic terms to an otherwise registered trademark does not protect a respondent from a finding that the domain name is confusingly similar to the complainant’s mark). The Panel finds that the <buyguessonline.com> domain name is confusingly similar to the GUESS mark under 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent is not known by the <buyguessonline.com> domain name because the WHOIS information lists “xiuzhen xian” as the registrant. Complainant further attests that it has not licensed, authorized, or permitted Respondent to use the GUESS mark for Respondent’s own purposes in domain names. The Panel finds that Respondent is not commonly known by the <buyguessonline.com> domain name under Policy ¶ 4(c)(ii).
See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant next argues that Respondent uses the <buyguessonline.com> domain name to offer goods in direct competition to those goods sold under the GUESS mark. Complainant states that some of these goods are believed to be counterfeit GUESS goods. Complainant states that Respondent amplifies the similarity between its goods and GUESS goods by using the GUESS mark explicitly throughout this domain name’s resolving websites and misappropriating copyright-protected images used by Complainant to market these counterfeits. The <buyguessonline.com> domain name resolves to a website featuring an online store selling clothing, namely jeans, under the GUESS mark. The Panel finds that the sale of competing counterfeits to Internet users under the misappropriated GUESS mark does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (the panel refused to find a Policy ¶ 4(c)(i) bona fide offering when a commercial website was being used to promote goods that were counterfeits of the complainant’s merchandise, and sold in direct competition with the complainant’s legitimate business).
Complainant argues that Respondent seeks to unfairly disrupt Complainant’s business by selling counterfeited and competing GUESS goods through the <buyguessonline.com> domain name’s website. Respondent’s <buyguessonline.com> domain name features the GUESS mark explicitly in the connection with the sale of clothing. The Panel finds that Respondent’s unpermitted sale of clothing goods under the GUESS mark illustrates Policy ¶ 4(b)(iii) bad faith through the disruption of Complainant’s legitimate GUESS business. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (the panel found bad faith commercial disruption on the part of the respondent when the domain name was being used to sell counterfeits under the complainant’s own mark).
Complainant next argues that Respondent capitalizes on a likelihood that Internet users will confuse Complainant and the GUESS mark as the source or origin of the competing and counterfeit goods sold through the <buyguessonline.com> domain name’s website. Complainant claims that Respondent reaps a commercial gain when these confused Internet users purchase these goods expecting to receive GUESS goods. The domain name is used to sell goods under the GUESS mark, and furthermore that each of the goods advertised on the domain name’s website is apparently promoted through the use of copyrighted images owned by Complainant. These facts provide a basis for finding that Respondent has acted so as to capitalize on a Policy ¶ 4(b)(iv) bad faith attempt to confuse Internet users into believing that Complainant is the source or origin of these counterfeit goods. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant next argues that Respondent is knowingly infringing on Complainant’s GUESS mark. Complainant argues that Respondent makes explicit use of the GUESS mark in promoting and offering the competing and counterfeited goods sold through the <buyguessonline.com> domain name. Complainant also argues that Respondent has constructive notice of Complainant’s registration of the GUESS mark with various national trademark agencies. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyguessonline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 19, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page