Guess? IP Holder L.P. and Guess?, Inc. v. Donald Guess
Claim Number: FA1705001732916
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Sami I Schilly of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Donald Guess (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guesscompany.com> and <guessandcompany.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2017; the Forum received payment on May 23, 2017.
On May 24, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guesscompany.com> and <guessandcompany.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2017 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@guesscompany.com, postmaster@guessandcompany.com. Also on May 25, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the GUESS mark based upon the registration with the registration with the United States Patent and Trademark Office (“USPTO”) ( e.g., Reg. No. 1,433,022, registered March 17, 1987). Respondent’s <guesscompany.com> and <guessandcompany.com> are confusingly similar to Complainant’s mark as they contain entire GUESS mark and merely add either the generic term “company” or the generic term “and company”.
Respondent does not have any rights or legitimate interests in either of the <guesscompany.com> and <guessandcompany.com> domain names. Respondent is not commonly known by the disputed domain names and Complainant has not granted Respondent permission or license to the GUESS mark for any purpose. Respondent does not use the disputed domain names for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is passively holding the domain names by not making an active use of the resolving webpages.
Respondent has registered and is using the domain names in bad faith. Respondent is passively holding two confusingly similar domain names to Complainant’s mark. Further, Respondent attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Finally, Respondent must have had actual knowledge of Complainant’s GUESS mark and business because of the famous reputation and familiarity to countless customers, coupled with the registration of the disputed domain name using the added generic terms Respondent chose to incorporate.
B. Respondent
Respondent did not file a response. The Panel notes that the <guesscompany.com> and <guessandcompany.com> domain names were created on March 4, 2017 & March 25, 2017, respectively.
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(f), 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 (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 designs, markets and distributes its full collections of women’s and men’s apparel worldwide. Complainant claims rights to the GUESS mark based upon registration with the USPTO (e.g., Reg. No. 1,433,022, registered March 17, 1987). Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the GUESS mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <guesscompany.com> and <guessandcompany.com> domain names are confusingly similar to
Complainant’s mark as they contain entire GUESS mark, and merely add one of the generic terms “company” or “and company”. Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark, are irrelevant and do not distinguish the domain name from the mark incorporated therein. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel agrees with Complainant and finds that the <guesscompany.com> and <guessandcompany.com> domain names do not contain changes that would sufficiently distinguish them from the GUESS mark.
Complainant argues that Respondent has no rights or legitimate interests in the <guesscompany.com> and <guessandcompany.com> domain names because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GUESS mark in any way. Where a response is lacking, WHOS information, coupled with the assertion by a complainant that respondent lacks authorization to use a mark, can support a finding that respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information on record identifies Respondent as “Donald Guess”. There is no evidence that Complainant licensed or authorized the use of the GUESS mark. The Panel, absent a response by Respondent, therefore agrees with Complainant and finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by its failure to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent is passively holding the disputed domain names. Nonuse or passive holding of a domain name does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4 (c)(i) & (iii). See Michelin North America, Inc. v. Energie Media Group, FA 1451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provided screenshots of the inactive use or parked webpage of the disputed domain names. The <guessandcompany.com> domain name resolves to a webpage which expressly states it is a parked page, while the <guesscompany.com> domain name displays the message “website coming soon!”. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use.
Complainant asserts that Respondent fails to make an active use and is passively holding the domain names. Failure to make an active use a domain name is evidence of bad faith. See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA 1532854 (Forum February 25, 2014). As noted previously, Complainant offers screenshots of the resolving webpages for the disputed domain names. Therefore, the Panel finds that Respondent’s inactive use indicates bad faith registration and use in regards to the disputed domain names.
Further, Complainant argues Respondent must have had actual knowledge of Complainant’s GUESS mark and business because that mark is famous and familiar to countless consumers. As Respondent registered domain names that each include Complainant’s well-known mark in its entirety, the Panel agrees that actual knowledge existed at the time of the registration of the domains, which further supports a finding of bad faith under 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 <guesscompany.com> and <guessandcompany.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 29, 2017
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