Guess? IP Holder L.P. and Guess?, Inc. v. monika durr / leonie schroeder / karin bader / dalanjiao ga / Clements Samuel
Claim Number: FA2103001939518
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is monika durr / leonie schroeder / karin bader / dalanjiao ga / Clements Samuel (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guessfactoryau.com>, <guessfactoryca.com>, <guessgr.com>, <guessolcson.com>, <guessrebajas.com>, <guesssalede.com>, (collectively “Domain Names”) registered with MAT BAO CORPORATION and NameSilo, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2021; the Forum received payment on March 29, 2021.
On March 30, 2021 and April 3, 2021 respectively, MAT BAO CORPORATION and NameSilo, LLC confirmed by e-mail to the Forum that the <guessfactoryau.com>, <guessfactoryca.com>, <guessgr.com>, <guessolcson.com>, <guessrebajas.com> and <guesssalede.com> domain names are registered with MAT BAO CORPORATION and/or NameSilo, LLC and that Respondent is the current registrant of the names. MAT BAO CORPORATION and NameSilo, LLC has verified that Respondent is bound by the MAT BAO CORPORATION and NameSilo, LLC registration agreements 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 April 8, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of April 28, 2021 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@guessfactoryau.com, postmaster@guessfactoryca.com, postmaster@guessgr.com, postmaster@guessolcson.com, postmaster@guessrebajas.com, postmaster@guesssalede.com. Also on April 8, 2021, the Vietnamese 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 parties a Notification of Respondent Default.
On May 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two 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 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 (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 (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 (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.
The Panel has reviewed the Complaint and is satisfied that that Guess? IP Holder L.P. is a wholly-owned subsidiary of Guess?, Inc. and the holder of the GUESS mark which it licenses to Guess?, Inc.. This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as “Complainant”.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the registrants for the Domain Names are related because: 1) the Domain Names are all similar variants of Complainant’s GUESS mark 2) the Domain Names were registered within 6 weeks of each other 3) the Domain Names <guessolcson.com>, <guessrebajas.com> <guessfactoryau.com> and <guessfactoryca.com> resolve to essentially identical websites (“Respondent’s Website”) featuring virtually identical content (including photographs) 4) the Domain Names <guessolcson.com>, <guessrebajas.com> and <guesssalede.com> are registered to the same entity and 5) the <guessfactoryau.com>, <guessfactoryca.com> and <guessgr.com> Domain Names are registered to the same Registrar and the <guessfactoryau.com>, <guessfactoryca.com> Domain Names share contact details. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that four unconnected entities would register very similar domain names within the same 6 week period, with four of the domain names pointing to essentially identical websites.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for this Decision.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The language of the Registration Agreement for the <guessfactoryau.com>, <guessfactoryca.com> and <guessgr.com> domain names is Vietnamese (the language of the Registration Agreement for the <guessolcson.com>, <guessrebajas.com> and <guesssalede.com> domain names is English). The Complaint has been provided in English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The Panel has already found that the registrant of <guessfactoryau.com>, <guessfactoryca.com> and <guessgr.com> domain names is the same registrant of the <guessolcson.com>, <guessrebajas.com> and <guesssalede.com> domain names (which was registered through an English-language agreement). Furthermore, the Respondent’s Website for <guessfactoryau.com> and <guessfactoryca.com> is in the English language. The address of the Respondent is either Germany or the United States. Given the alternative is to order that the proceeding continue in the Vietnamese language, a language which neither the Complainant, nor the Respondent (who is based in Germany or the United States) are likely to be familiar with, after considering the circumstances of the present case, the Panel decides that the proceeding should continue in English.
A. Complainant
Complainant, Guess? IP Holder L.P. and Guess?, Inc., began as a jeans company and has developed into a global lifestyle brand. Complainant has rights in the GUESS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered March 17, 1987). Respondent’s <guessfactoryau.com>, <guessfactoryca.com>, <guessgr.com>, <guessolcson.com>, <guessrebajas.com>, and <guesssalede.com> domain names are confusingly similar to Complainant’s GUESS mark because they each feature the mark as the dominant portion of the domain name, simply adding a generic term or abbreviation and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and is does not have Complainant’s permission to use Complainant’s GUESS mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <guessfactoryau.com>, <guessfactoryca.com>, <guessolcson.com>, and <guessrebajas.com> domain names to offer competing counterfeit products from the Respondent’s Website and passively holds the <guesssalede.com> and <guessgr.com> domains.
Respondent registered and uses the Domain Names in bad faith. Respondent disrupts Complainant’s business for commercial gain by offering unauthorized competing goods at the <guessfactoryau.com>, <guessfactoryca.com>, <guessolcson.com>, and <guessrebajas.com> domains. Additionally, Respondent fails to make active use of the <guesssalede.com> and <guessgr.com> domains. Further, Respondent had actual knowledge of Complainant’s rights in the GUESS mark at the time the Domain Names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GUESS mark. Each of the Domain Names is confusingly similar to Complainant’s GUESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the GUESS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. No. 1,433,022, registered March 17, 1987). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names is confusingly similar to the GUESS mark as they each incorporate the entire GUESS mark while adding generic and/or geographic terms (“factory” and “au” [an abbreviation for Australia] for example) and the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the GUESS mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “monika durr / leonie schroeder / karin bader / dalanjiao ga / Clements Samuel” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names <guesssalede.com> and <guessgr.com> are inactive which by itself does not show rights or legitimate interests. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Each of the remaining Domain Names resolves to the Respondent’s Website. The Respondent’s Website, through the reproduction of the GUESS Mark and reference to Complainant’s products, passes itself off as an official website of the Complainant for the purpose of selling counterfeit versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers counterfeit versions of a complainant’s goods or goods or services that directly compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between (October-November 2020), Respondent had actual knowledge of Complainant’s GUESS mark since the Respondent’s Website passes itself off as an official website of the Complainant for the purpose of selling counterfeit goods. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register six domain names that contain the GUESS mark and use four of them to redirect a website selling goods in direct competition with the Complainant under the GUESS mark other than to take advantage of Complainant’s reputation in the GUESS mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s GUESS Mark for commercial gain by using the confusingly similar Domain Names <guessfactoryau.com>, <guessfactoryca.com>, <guessolcson.com> and <guessrebajas.com> to resolve to a website offering counterfeit versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
With respect to the <guesssalede.com> and <guessgr.com> Domain Names, the Panel finds on the balance of probabilities (and noting the absence of an explanation from Respondent) that they are being passively held pending use for a similar purpose as the remaining Domain Names. As such these Domain Names are also being used in bad faith. See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds 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 <guessfactoryau.com>, <guessfactoryca.com>, <guessgr.com>, <guessolcson.com>, <guessrebajas.com>, and <guesssalede.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 4, 2021
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