Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited / Qiuyun Li / David Harvey / Christine DECKER / Niklas PFEFFER
Claim Number: FA2304002042376
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 Client Care / Web Commerce Communications Limited / Qiuyun Li / David Harvey / Christine DECKER / Niklas PFEFFER (“Respondent”), Malaysia.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <guesssalenz.com>, <guessuaesale.com>, <guessportugallojas.com>, <guessnorway.com>, <guessportugal.net>, and <guess-costarica.com> (“Disputed Domain Names”), are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Realtime Register B.V.; 1API GmbH; NETIM SARL. (“Registrars”).
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on April 28, 2023; Forum received payment on April 28, 2023.
On May 1, 2023; May 2, 2023; and May 4, 2023, the Registrars confirmed by e-mail to Forum that the <guesssalenz.com>, <guessuaesale.com>, <guessportugallojas.com>, <guessnorway.com>, <guessportugal.net>, and <guess-costarica.com> domain names are registered with them and that the respondents are the current registrant of the names. The Registrars verified that the respondents are bound by their registration agreements and have 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 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 by which the respondents could each file a Response to the Complaint, via e-mail to all entities and persons listed on registrations as technical, administrative, and billing contacts, and to postmaster@guesssalenz.com, postmaster@guessuaesale.com, postmaster@guessportugallojas.com, postmaster@guessnorway.com, postmaster@guessportugal.net, postmaster@guess-costarica.com. Also on May 9, 2023, the Written Notice of the Complaint, notifying the respondents of the e-mail addresses served and the deadline for a Response, was transmitted to each respondent via post and fax, to all entities and persons listed on their registrations as technical, administrative and billing contacts.
Having received no response, Forum transmitted to all parties a Notification of Respondent Default.
On June 5, 2023, pursuant to the complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from any Respondent.
The Complaint requests that the Disputed Domain Names be transferred from the respondents to the complainants.
There are two named complainants. Paragraph 3(a) of the Rules states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” 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.”
The Complaint provides evidence that Guess? IP Holder L.P. is a Delaware limited partnership that is wholly owned by Complainant Guess?, Inc.. Absent any challenge from Respondent or any other reason not to accept that claim the Panel accepts that the named complainants are sufficiently linked for the purposes of Supplemental Rule 1(e). Accordingly, the Panel treats them as a single entity in this proceeding, hereinafter referring to them together as “Complainant” unless otherwise stated[i].
Paragraph 3(c) of 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.” Nonetheless, Complainant alleges that the named registrants of the Disputed Domain Names are all fictitious aliases for a single person or entity which has common control of them.
The Panel is entitled to accept that submission and in this instance Complainant’s supporting argument is that the Disputed Domain Names resolve to identical websites which share a common IP address. That being so, the Panel treats the named owners as one and refers hereinafter simply to “Respondent”.
A. Complainant
Complainant asserts trademark rights in GUESS and submits that the Disputed Domain Names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells clothing and fashion accessories by reference to the trademark, GUESS, which is the subject of, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 1,433,022 from March 17, 1987;
2. the Disputed Domain Names were all created in 2022 and resolve to sites which use the trademark; Complainant’s copyright protected images; and offer for sale clothing and fashion accessories; and
3. there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.
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 based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Complainant therefore has rights in GUESS since it provides proof of its registration of that trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the Disputed Domain Names with the trademark, the gTLDs “.com” and “.net” can be disregarded as trivial. Thereafter, the Disputed Domain Names take the trademark to which they add the country names or common abbreviations thereof, with or without the descriptive term “sale” or a foreign language equivalent thereof. Those additions are of no distinctive value and the trademark remains the recognizable part of the Disputed Domain Names. As such, the Panel finds the names to be confusingly similar to the trademark[iii].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The names of the underlying domain name holders, as disclosed by the Registrars, do not provide any indication that Respondent might be commonly known by any of the Disputed Domain Names.
There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
Complainant provides screenshots of the resolving websites which display direct copies of Complainant’s product and model images. Complainant states that the goods offered for sale are counterfeit but provides no evidence of that claim.
Whether the goods are copies, or genuine goods being put on the market without Complainant’s approval, makes no difference since the Panel finds in either case that Respondent has no rights or legitimate interests in the Disputed Domain Names. Clearly the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under the Policy[v]. Alternatively, the trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods[vi].
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving websites exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of that website by implying to internet users that they will reach a local site either operated by Complainant or someone affiliated with Complainant[vii].
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Disputed Domain Names be TRANSFERRED from Respondent to Complainants.
Debrett G. Lyons, Panelist
Dated: June 6, 2023
[i] See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006).
[ii] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[iii] See, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”;
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.")).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
[vi] See, for example, 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, which were either counterfeit products or legitimate products of complainant being resold without authorization.
[vii] See, for example, H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) determining that selling counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv).
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