Guess? IP Holder L.P. and Guess?, Inc. v WANG TIANMING
Claim Number: FA1410001587219
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 WANG TIANMING (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessonlinesale.com>, registered with eNOM, Inc.
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 October 28, 2014; the National Arbitration Forum received payment on October 28, 2014.
On October 29, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <guessonlinesale.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 October 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@guessonlinesale.com. Also on October 29, 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 24, 2014, 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.
A. Complainant
1. Respondent’s <guessonlinesale.com> domain name is confusingly similar to Complainant’s GUESS mark.
2. Respondent does not have any rights or legitimate interests in the <guessonlinesale.com> domain name.
3. Respondent registered and uses the <guessonlinesale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its GUESS mark to promote the sale of apparel and related products. The GUESS mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987).
Respondent registered the <guessonlinesale.com> domain name on November 2, 2013, and uses it to sell counterfeit GUESS merchandise.
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 has rights in its GUESS mark for purposes of Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through USPTO registration).
Respondent’s <guessonlinesale.com> domain name incorporates the GUESS mark and simply adds generic terms and the gTLD “.com.” The Panel finds that adding the gTLD and the generic terms “online” and “sale” does not distinguish the disputed domain name from Complaiant’s mark. See 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).
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 argues that Respondent is not known by the <guessonlinesale.com> domain name, and Complainant has not authorized Respondent’s use of the GUESS mark. The Panel notes “Wang Tianming” is listed as the registrant of record for the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under 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 also argues that Respondent uses the <guessonlinesale.com> domain name to sell counterfeit GUESS merchandise to Internet users. The Panel notes that the domain name resolves to a website where goods bearing the GUESS mark are offered for sale. In eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), the panel found that the use of a domain name to sell counterfeit merchandise was unacceptable under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). Thus, the Panel finds that using the domain name to sell counterfeit GUESS goods is not a bona fide offering under Policy ¶ 4(c)(i), nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent disrupts Complainant’s GUESS business by selling competing and counterfeit goods on the <guessonlinesale.com> domain name’s website. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
The sale of counterfeit GUESS products also indicates Respondent’s intent to profit from the likelihood that Internet users may mistakenly believe they are on Complainant’s website when they go to <guessonlinesale.com>. The Panel finds that this amounts to Policy ¶ 4(b)(iv) bad faith. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant alleges that Respondent registered and is using the <guessonlinesale.com> domain name with actual knowledge of the GUESS mark and Complainant’s rights in the mark. The Panel agrees and finds that, due to the fame of Complainant's GUESS mark and Respondent’s sale of counterfeit GUESS goods, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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.”).
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 <guessonlinesale.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 3, 2014
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