Guess? IP Holder L.P. and Guess?, Inc. v. JASON RICHARDSON and JASON RICHARDSON
Claim Number: FA1410001586323
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 JASON RICHARDSON and JASON RICHARDSON (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessshoesonline.com>, registered with FastDomain Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 22, 2014; the National Arbitration Forum received payment October 22, 2014.
On October 23, 2014, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <guessshoesonline.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. verified that Respondent is bound by the FastDomain Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2014, 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@guessshoesonline.com. Also on October 23, 2014, 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 November 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
Complainant notes that it has used GUESS for its broad operations in the retail sale of apparel and clothing. This GUESS mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022, registered March 17, 1987). The <guessshoesonline.com> domain name is confusingly similar to the mark.
Respondent has no rights to or legitimate interests in the <guessshoesonline.com> domain name. Respondent is not known by the <guessshoesonline.com> domain name. Further, the <guessshoesonline.com> domain name is being used to sell competing and counterfeit merchandise. See Compl., at Attached Ex. E.
Respondent registered and is using the <guessshoesonline.com> domain name in bad faith. Respondent is disrupting the GUESS business by selling competing and counterfeit goods using the GUESS mark in the <guessshoesonline.com> domain name. Likewise, the use of the <guessshoesonline.com> domain name to host products bearing the GUESS mark illustrates an intent to profit from the likelihood that Internet users will conclude that they must be doing business with the GUESS entity, Complainant, or an authorized user of the GUESS mark. Such imitation reveals actual knowledge.
Respondent makes the following allegations in Response:
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <guessshoesonline.com> domain name October 17, 2012, some thirty years after Complainant established rights in the mark.
Complainant established that it has rights and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests in the mark contained within the disputed domain name.
Respondent registered and used a disputed domain name containing in its entirety Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant notes that it first used the GUESS mark for its broad operations in the field in the retail sale of apparel and clothing, beginning in 1981. Complainant registered the GUESS mark with the USPTO (e.g., Reg. No. 1,433,022, registered March 17, 1987). The Panel finds that this USPTO registration is evidence of Policy ¶ 4(a)(i) rights in the mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <guessshoesonline.com> domain name is confusingly similar to the mark. The Panel agrees that Respondent added the generic top-level domain “.com,” the generic term “online,” and the descriptive term “shoes” to the mark in forming the domain name. This Panel finds that these alterations produce a confusingly similar domain name that relies heavily, by reference, upon the presence of the GUESS mark. See, e.g., Mead Johnson & Company, LLC v. noom kung, FA 1521731 (Nat. Arb. Forum Oct. 24, 2013) (holding that the addition of multiple terms, both generic and descriptive, do not negate a finding of confusing similarity).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 known by the <guessshoesonline.com> domain name. The Panel notes that “Jason Richardson” is listed as the registrant of record in the WHOIS record. The Panel agrees that no basis in this record supports a finding that Respondent is “commonly known” by this particular domain name as per Policy ¶ 4(c)(ii). 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).
Complainant claims that the <guessshoesonline.com> domain name is being used to sell competing and counterfeit merchandise, and thus the use does not constitute a bona fide offering of the domain name. See Compl., at Attached Ex. E. The Panel agrees that using the <guessshoesonline.com> domain name to promote the sale of competing and potentially counterfeit goods is a use that shall remain unprotected under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges that Respondent is disrupting the GUESS business by selling competing and counterfeit goods using the GUESS mark in the <guessshoesonline.com> domain name. The Panel notes once more that the domain name is evidently used to promote and sell goods bearing the GUESS mark. See Compl., at Attached Ex. E. In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), the panel agreed that the sale of counterfeit merchandise created Policy ¶ 4(b)(iii) bad faith disruption. This Panel agrees that the sale of this evidently counterfeit merchandise is indefensible and constitutes Policy ¶ 4(b)(iii) bad faith commercial disruption.
Complainant further claims that the use of the <guessshoesonline.com> domain name to host products bearing the GUESS mark illustrates an intent to profit from the likelihood that Internet users will conclude that they must be doing business with the GUESS entity and buying GUESS goods from either Complainant, or an authorized user of the GUESS mark. The Panel agrees that the use of this domain name as shown in Exhibit E is causing a likelihood that Internet users may confuse Complainant as the source of the counterfeit goods, while Respondent profits by selling illegitimate goods to unsuspecting consumers under Complainant’s mark. See, e.g., Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel finds Policy ¶ 4(b)(iv) bad faith.
Lastly, Complainant claims Respondent’s bad faith is demonstrated by Respondent’s actual knowledge of Complainant and its mark. Complainant argues this is revealed by Respondent’s use of the <guessshoesonline.com> domain name to provide counterfeit goods under the GUESS brand. The Panel agrees that Respondent had actual knowledge of Complainant and its GUESS mark given Respondent’s counterfeiting efforts. See Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”).
Respondent makes no contentions relative to 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 <guessshoesonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 24, 2014.
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