Guess? IP Holder L.P. and Guess?, Inc. v. JiangTao Cai
Claim Number: FA2206002000802
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 JiangTao Cai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-that.com>, registered with Global Domain Name Trading Center Ltd.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2022; the Forum received payment on June 17, 2022.
On Jun 19, 2022, Global Domain Name Trading Center Ltd confirmed by e-mail to the Forum that the <guess-that.com> domain name is registered with Global Domain Name Trading Center Ltd and that Respondent is the current registrant of the name. Global Domain Name Trading Center Ltd has verified that Respondent is bound by the Global Domain Name Trading Center 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 23, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 13, 2022 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@guess-that.com. Also on June 23, 2022, the Chinese and English 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 July 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 name be transferred from Respondent to Complainants.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Complainants requests that the language of this administrative proceeding shall proceed in the English language pursuant to UDRP Rule 11(a). The Complainants make this request in light of the Chinese language Registration Agreement. 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. UDRP Rule 10 (b) states that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The UDRP Rule 10 (c) states that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel has taken into consideration that the Respondent did not file a response, and thereby also failed to argue that the language of proceeding should be in Chinese language. Although this is not enough alone to treat English as the language of proceeding, it is one indicator that Respondent accepts English.
Here, it shall also be duly noted that the Forum has, on July 19, 2022, communicated in Chinese with the Respondent, informing of the appointment of the Panelist, due date for the Administrative Hearing, and how the parities shall communicate with the Forum – still resulting in no actions or communications from the Respondent. This is a further indication that Respondent has chosen to not make any Response at all, independent of the language of the proceeding.
The Panel further notes that the disputed domain name is similar to the US-based Complainants trademark (and company name), clearly constructed as the English word “that” added after the Complainants trademark and dominant part of the Complainants company name/s: Guess. These combined (English) words have no meaning in the Chinese language, indicating that the disputed domain name was registered with a more international (English spoken) audience in mind, with knowledge of Complainants trademark.
The Panel has weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party, together with the other referred facts and indications in the case. 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.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainants to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants: Guess? IP Holder L.P. and Guess?, Inc. 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 the present case, the Complainants has provided a Declaration explaining the corporate structure and specific relationship between the Complainants, namely that Guess? IP Holder L.P. is a Delaware limited partnership that is effectively wholly owned by Guess?, Inc.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Panel will therefore treat them together as a single entity in this proceeding. The Complainants will hereafter be collectively referred to as “Complainant”, except where otherwise specifically identified.
A. Complainant
The Complainant offer clothing, apparel, and accessories retail services. Complainant has rights in the GUESS trademark through registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,433,022, registered on March 17, 1987). Respondent’s <guess-that.com> domain name is identical or confusingly similar to Complainant’s GUESS trademark as it incorporates the trademark while adding the generic term “that” along with a hyphen and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <guess-that.com> domain name. Respondent is not commonly known by the disputed domain name, nor have Complainant authorized or licensed Respondent to use its GUESS trademark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead diverts internet traffic to an adult-oriented webpage.
Respondent registered and uses the <guess-that.com> domain name in bad faith. Respondent disrupts Complainants’ business while attracting users for commercial gain, and causing consumer confusion. Additionally, Respondent causes initial interest confusion while engaging in opportunistic bad faith and hosting adult-oriented content. Furthermore, Respondent used a privacy service to hide its identity and registered the domain name with at least constructive knowledge of Complainants’ rights in the GUESS trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant, Guess?, Inc., is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 1,704,002 GUESS (word), registered on July 28, 1992 for goods in Intl Classes 3 and 9;
- No. 2,077,475 GUESS (word), registered on July 8, 1997 for goods in Intl Class 14;
- No. 2,308,468 GUESS? (fig), registered on Jan 18, 2000 for goods and services in Intl Classes 9, 14, 16, 18, 25, 26 and 35;
- No. 2,370,424 GUESS (word), registered on July 25, 2000 for services in Intl Class 35;
- No. 1,978,398 GUESS? (fig), registered on June 4, 1996 for goods in Intl Class 14;
- No. 1,271,896 GUESS? (fig), registered on March 27, 1984 for goods in Intl Class 25;
- No. 1,299,580 GUESS? (fig), registered on October 9, 1984 for goods in Intl Classes 24 and 25;
- No. 1,427,405 GUESS? (word), registered on February 3, 1987 for goods in Intl Class 14;
- No. 1,433,022 GUESS (word), registered on March 17, 1987 for goods in Intl Class 25;
- No. 1,435,363 GUESS? (fig), registered on April 7, 1987 for goods in Intl Classes 9, 14, 16, 18, 20, 21 and 24;
- No. 1,458,438 GUESS (fig), registered on September 22, 1987 for goods in Intl Class 25;
- No. 1,546,993 GUESS (fig), registered on July 11, 1989 for goods in Intl Class 3.
The Complainant has also referred to national Chinese trademark registrations, and has at least provided suitable and translated evidence for
- No 793772 GUESS (word), registered on November 21, 1995 for goods in Intl Class 28.
The Complainant has provided copies of Certificates of Registration also for national Chinese trademark registrations No 293554 and 383332. These are not translated into English. As Complainant has specifically requested that the language of this administrative proceeding shall proceed in the English language, the Panel will not consider any documentation provided by the Complainant that is not in the requested language.
The disputed domain name <guess-that.com> domain name was registered on March 3, 2022
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”).
The Complainant claim rights in the GUESS trademark through registration with multiple trademark agencies, including the USPTO (e.g. Reg. No. 1,433,022, registered on March 17, 1987). Registration with multiple trademark agencies including the USPTO is generally considered sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel find that Complainant has rights in the GUESS trademark under Policy ¶ 4(a)(i).
Complainant argue that Respondent’s <guess-that.com> domain name is identical or confusingly similar to Complainants’ GUESS trademark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the trademark it incorporates where it adds a generic term, a hyphen, and the “.com” gTLD. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). In the present case, the disputed domain name incorporates the trademark in its entirety while adding the generic term “that”, along with a hyphen and “.com” gTLD. Therefore, the Panel find that Respondent’s domain name is identical or confusingly similar to the Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant argue that Respondent is not commonly known by the <guess-that.com> domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a complainant’s assertion that it never authorized or licensed respondent to use its trademark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies Respondent as “Jiangtao Cao”, and nothing in the record rebuts Complainants’ assertions that it never authorized or licensed Respondent to use its trademark in the disputed domain name. Thus, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the <guess-that.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert internet users does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant contends that Respondent uses the domain name to divert internet users to its resolving website, which displays adult-oriented material. The Panel agree with Complainant’s conclusion, and find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant argues that Respondent is not using the <guess-that.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use by displaying adult-oriented content. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to display adult-oriented material does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). Referring again to Complainant’s screenshots of the resolving website, which displays adult-oriented material, the Panel find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argue that Respondent registered and uses the <guess-that.com> domain name in bad faith. Under Policy ¶ 4(b)(iii), using a disputed domain name to host adult-oriented content is a disruption of a complainant’s business and thus evidence of bad faith. See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site). As noted above, the resolving website displays adult-oriented material, and the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant contends that Respondent registered and uses the <guess-that.com> domain name in bad faith by attracting users for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to attract users to a resolving website for commercial gain may be evidence of bad faith registration and use. See Allianz of Am. Corp. v. Bond, FA 680624 (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). Based on the use of the disputed domain name, the Panel agree with Complainant and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant argues that Respondent registered and uses the <guess-that.com> domain name in bad faith by diverting users to cause consumer confusion. Under Policy ¶ 4(b)(iv), diverting users and causing confusion as to the source and affiliation of the website with a complainant may be evidence of bad faith registration and use. See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Also here, the Panel agrees with Complainant’s conclusion, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contend that Respondent registered and uses the <guess-that.com> domain name in bad faith by causing initial interest confusion and engaging in opportunistic bad faith. Under Policy ¶ 4(a)(iii), initial interest confusion and opportunistic bad faith may be demonstrated where a disputed domain name is obviously connected to a well-known mark, and is thus evidence of bad faith. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). The Panel recalls that Complainants’ well-known trademark is incorporated into the disputed domain name. Thus, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered and uses the <guess-that.com> domain name in bad faith by hosting adult-oriented content. Under Policy ¶ 4(a)(iii), using a disputed domain name to display adult-oriented material is evidence of bad faith registration and use. See Paws, Inc. v. Zuccarini, FA 125368 (Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”). The Panel agrees and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainants contend that Respondent’s bad faith is further demonstrated by its use of a privacy service to hide its identity. Under Policy ¶ 4(a)(iii), use of a privacy service to hide one’s identity may be evidence of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel notes that Respondent’s identity was initially hidden by a privacy service, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <guess-that.com> domain name with constructive knowledge of Complainants’ rights in the trademark. While past panels have previously found that constructive notice is not sufficient for a finding of bad faith under Policy ¶ 4(a)(iii), actual notice may be found based on the fame and notoriety of a mark. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Although Complainant do not argue that Respondent had actual notice of Complainants’ rights in the trademark, Complainant provides evidence of the longstanding use of the GUESS trademark. Therefore, the Panel finds it most likely that Respondent had actual notice of Complainants’ rights in the GUESS trademark, and thereby find 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 <guess-that.com> domain name be TRANSFERRED from Respondent to Complainant, Guess?, Inc..
Petter Rindforth, Panelist
Dated: August 1, 2022
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