Guess? IP Holder L.P. and Guess?, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1308001516362
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 PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessonlinestore.com>, registered with CLOUD GROUP LIMITED.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2013; the National Arbitration Forum received payment on August 23, 2013.
On August 27, 2013, CLOUD GROUP LIMITED confirmed by e-mail to the National Arbitration Forum that the <guessonlinestore.com> domain name is registered with CLOUD GROUP LIMITED and that Respondent is the current registrant of the name. CLOUD GROUP LIMITED has verified that Respondent is bound by the CLOUD GROUP LIMITED 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 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@guessonlinestore.com. Also on August 27, 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 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
PRELIMINARY ISSUE: MULTIPLE 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 National Arbitration 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 states that “Complainants, Guess? IP Holder L.P. and Guess?, Inc. (collectively “Complainants” or “Guess?”), own the world-famous GUESS brand which it has used for over 30 years in connection with their highly successful lines of men’s and women’s apparel…) Although Complainant switches between the singular and plural, the Panel finds that Complainant means to refer to the named Complainants as a single entity. Further, though Complainant does not specifically present arguments regarding the connection between Guess! IP Holder L.P., and Guess?, Inc., the Panel finds that it is common for corporations to have a holding company to handle their Intellectual Property (IP), including trademarks.
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 (Nat. Arb. 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 (Nat. Arb. 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 (Nat. Arb. 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.
In the absence of any objection from Respondent, the Panel finds that both Complainants have rights in the GUESS mark and will be collectively referred to as “Complainant.”
A. Complainant
1. Respondent’s <guessonlinestore.com> domain name is confusingly similar to Complainant’s GUESS mark.
2. Respondent does not have any rights or legitimate interests in the <guessonlinestore.com> domain name.
3. Respondent registered and uses the <guessonlinestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has owned and used the GUESS? mark in its business since 1981, and owns trademark registrations for the GUESS? mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,427,405 registered February 3, 1987), and for the GUESS mark (e.g., Reg. No. 1,433,022 registered March 17, 1987).
Respondent uses the <guessonlinestore.com> domain name to resolve to a website that sells counterfeit GUESS goods and other goods directly competing with Complainant’s GUESS brand goods.
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.”).
The Panel finds that Complainant’s rights in the GUESS mark are secured by its USPTO registration. Previous panels have found that USPTO registration of a mark to sufficiently demonstrate a complainant’s rights in the claimed mark under the Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <guessonlinestore.com> domain name is confusingly similar to Complainant’s GUESS mark, since it incorporates the entire GUESS mark and simply adds the generic terms “online” and “store.” The Panel finds that attaching generic terms and the gTLD “.com” to Complainant’s mark does not distinguish the disputed domain name from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Thus, the Panel finds that the <guessonlinestore.com> domain name is confusingly similar to Complainant’s GUESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the <guessonlinestore.com> domain name, based on Respondent’s unauthorized use of the GUESS mark, and the registrant in the WHOIS information, identified as “xxx.” Previous panels have been persuaded by the WHOIS information, as well as a complainant’s claim that it had not granted the respondent permission to use the mark in a domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel finds that Respondent is not commonly known by the disputed domain name and thus does not possess rights or legitimate interests in the <guessonlinestore.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent does not use the <guessonlinestore.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and claims that Respondent has made a “plainly commercial use” by selling goods directly competitive with Complainant’s business. Complainant argues that Respondent has established a website that purports to offer Complainant’s goods, but which are in fact counterfeit versions thereof, and also sells other goods in competition with Complainant. The panel in eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), stated that the sale of counterfeit products is evidence of the respondent’s failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the Panel held that by appropriating the complainant’s mark to market products in competition with the complainant’s good, the respondent’s use of the disputed domain name does not show a bona fide offering of goods or services. The Panel likewise finds that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) of the disputed domain name.
Complainant argues that Respondent lifts photographs that originated on Complainant’s website and uses them on the website resolving from the <guessonlinestore.com> domain name. Complainant claims that the photographs include product and model photographs, which Respondent uses in an effort to create the appearance and misperception that Respondent’s website is operated by Complainant. Complainant further asserts that Respondent prominently displays the GUESS mark at the top of the website. The Panel finds that Respondent is attempting to pass itself off as Complainant, and thus does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <guessonlinestore.com> domain name to sell counterfeit goods under the GUESS mark, using Complainant’s copyright-protected photographs. Previous panels have drawn the conclusion that when a respondent creates a website nearly identical to that of the complainant, the respondent demonstrates disruptive and bad faith registration and use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). The panel in Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), maintained that selling counterfeit goods disrupts a complainant’s business and is evidence of bad faith registration and use. The Panel finds that Respondent’s sale of counterfeit GUESS! goods demonstrates ¶ 4(b)(iii) bad faith registration and use.
Respondent displays Complainant’s mark and photographs from Complainant’s website, constituting an attempt by Respondent to pass itself off as Complainant, further evidence of bad faith use under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Respondent uses the <guessonlinestore.com> domain name to attract consumers to its website in order to sell counterfeit GUESS goods and similar goods, in direct competition with Complainant’s business, presumably for commercial gain. This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Complainant alleges that Respondent registered the <guessonlinestore.com> domain name with actual knowledge of Complainant’s rights in the GUESS mark, as evidenced by Respondent’s attempt to pass itself off as Complainant. The Panel agrees and finds that Respondent clearly had actual knowledge of Complainant’s mark, further demonstrating bad faith registration pursuant to Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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).
The Panel finds that Complainant has satisfied 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 <guessonlinestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 30, 2013
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