Guess? IP Holder L.P. and Guess?, Inc. v. jackhuang / jack huang
Claim Number: FA1506001624422
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is jackhuang / jack huang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <guessjeans-onlinemall.com>, <guessjeans-onsale.com> and <guessjeans-shop.com>, registered with eName Technology Co., Ltd.
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 Forum electronically on June 15, 2015; the Forum received payment on June 15, 2015. The Complaint was received in both Chinese and English.
On June 16, 2015, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <guessjeans-onlinemall.com>, <guessjeans-onsale.com> and <guessjeans-shop.com> domain names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. has verified that Respondent is bound by the eName 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 June 22, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 13, 2015 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@guessjeans-onlinemall.com, postmaster@guessjeans-onsale.com, postmaster@guessjeans-shop.com. Also on June 22, 2015, the Chinese language 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
On July 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <guessjeans-onlinemall.com>, <guessjeans-onsale.com> and <guessjeans-shop.com> domain names are confusingly similar to Complainant’s GUESS mark.
2. Respondent does not have any rights or legitimate interests in the <guessjeans-onlinemall.com>, <guessjeans-onsale.com> and <guessjeans-shop.com> domain names.
3. Respondent registered and uses the <guessjeans-onlinemall.com>, <guessjeans-onsale.com> and <guessjeans-shop.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the GUESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,433,022, registered March 17, 1987) and China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 393,554, registered July 20, 1987). Complainant uses the GUESS mark in connection with its line of men’s and women’s apparel and related goods.
Respondent registered the <guessjeans-onlinemall.com> on July 28, 2014; the <guessjeans-onsale.com> on October 21, 2014; and the <guessjeans-shop.com> domain name on July 28, 2014. Respondent uses the <guessjeans-onlinemall.com> domain name to sell Complainant’s products, including many counterfeit GUESS items. Respondent fails to make an active use of the other two disputed domain names.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
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.
There are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Complainants state that Guess? IP Holder L.P. is a Delaware limited partnership that is wholly owned by Guess?, Inc. and that the trademark activities of these two companies are coordinated and managed together. The Panel finds that this is sufficient to establish a nexus between the Complainants, and elects to treat them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
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 USPTO and SAIC registrations are sufficient to establish Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i). Prior Panels have similarly found that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <guessjeans-onlinemall.com>, <guessjeans-onsale.com> and <guessjeans-shop.com> domain names all contain Complainant’s mark along with generic terms, a hyphen, and the gTLD “.com.” Previous panels have found that the addition of a hyphen is insufficient to create distinction between the disputed domain name and the registered mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Prior panels have also found that inserting generic terms does not distinguish the disputed domain name from a complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Further, past panels have agreed that the addition of a gTLD does nothing to distinguish the disputed domain name from the registered mark. See OL 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 disputed domain names are 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 asserts that Respondent has no rights or legitimate interests in the disputed domain names, and is not commonly known by the disputed domain names. The WHOIS record for the disputed domain names lists “jackhuang / jack huang” as the registrant of record. Complainant states that it has never given permission for Respondent to use Complainant’s mark. Therefore, the Panel finds that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <guessjeans-onlinemall.com>, <guessjeans-onsale.com> and <guessjeans-shop.com> domain names is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the <guessjeans-onlinemall.com> domain name to sell Complainant’s products, including many counterfeit GUESS items. Previous panels have found that such use is not a bona fide offering of goods or services, or for a legitimate noncommercial or fair use pursuant to Policies ¶ 4(c)(i) or ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Complainant alleges that Respondent has failed to make an active use of the <guessjeans-onsale.com> and <guessjeans-shop.com> domain names. The Panel agrees that Respondent has not established rights or legitimate interests in the <guessjeans-onsale.com> and <guessjeans-shop.com> domain names pursuant to Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s registration and use of the <guessjeans-onlinemall.com> domain name disrupts Complainant’s business by diverting Internet users searching for Complainant’s website to Respondent’s competing website. The Panel agrees and finds that Respondent’s use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Respondent uses the <guessjeans-onlinemall.com> domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant has demonstrated that Respondent causes confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, to Respondent’s profit. Previous panels have found bad faith registration and use where a respondent uses a mark confusingly similar to a complainant’s to sell complainant’s products. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Respondent has failed to make an active use of the <guessjeans-onsale.com> and <guessjeans-shop.com> domain names, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). Complainant asserts that failure to actively use a domain name is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). The Panel agrees and finds bad faith registration under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Finally, Complainant contends that Respondent had knowledge of Complainant’s rights in the GUESS mark when it registered the disputed domain names because Respondent uses Complainant’s GUESS mark and Complainant’s photographs, and due to Complainant’s trademark registration. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the GUESS mark prior to registering the disputed domain names, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
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 <guessjeans-onlinemall.com>, <guessjeans-onsale.com>, <guessjeans-shop.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 21, 2015
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