Guess? IP Holder L.P. and Guess?, Inc. v. Ronald Valenzuela
Claim Number: FA2305002044234
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 Ronald Valenzuela (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessus.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on May 11, 2023; Forum received payment on May 11, 2023.
On May 11, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <guessus.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2023, 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@guessus.us. Also on May 12, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 Complainant.
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules for the usTLD Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint….” Forum 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.”
In the instant proceedings, there are two discrete Complainants: Guess? IP Holder LP and Guess?, Inc. The Complaint before us recites, without objection from Respondent, that Guess? IP Holder LP licenses certain Guess trademarks and corresponding registrations, and that Guess?, Inc. is a licensee of Guess trademarks and has the right to use such marks.
It is well established that multiple parties may proceed as one where they can show a sufficient link to one another. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel there finding that:
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.
See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), in which a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a mark at issue in the proceeding.
There being no objection from Respondent, on the facts before us the allegations of the Complaint are sufficient to establish a nexus between Guess? IP Holder LP and Guess?, Inc. justifying that they be permitted to proceed as a single complainant for all purposes in this proceeding. Accordingly, throughout the remainder of this proceeding, the two will be referred to collectively as “Complainant.”
A. Complainant
Complainant is a leading worldwide retailer of men’s, women’s and children’s apparel and related goods.
Complainant holds a registration for the GUESS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,704,022, registered July 28, 1992, and renewed most recently as of October 12, 2022.
Since 1995, Complainant has done business online at the address <guess.com>.
Respondent registered the domain name <guessus.us> on June 1, 2022.
The domain name is confusingly similar to Complainant’s GUESS mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the GUESS mark.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to a webpage which displays Complainant’s GUESS mark and proprietary photos while offering for sale counterfeit versions of Complainant’s goods in order to reap for itself commercial gain.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered the domain name with knowledge of Complainant’s rights in the GUESS mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
By reason of its registration of the GUESS trademark with a national trademark authority, the USPTO, Complainant has shown that it has rights in that mark sufficient to satisfy the requirement of Policy¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that a complainant’s registration of its mark with the USPTO sufficiently confirmed its rights in that mark under Policy¶4(a)(i)).
Turning to the core question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <guessus.us> domain name is confusingly similar to Complainant’s GUESS mark. The domain name incorporates the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.us” and the generic term “us,” which identifies Complainant’s country of origin as well as one of its principal market territories. Many panels have found that the addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy ¶4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy¶4(a)(i) analysis because domain name syntax requires TLDs.
See also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Forum March 21, 2005) (finding a respondent’s <lifetouch.us> domain name to be identical to a complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”).
Further see Doosan Corporation v. philippe champain, FA 1636675 (Forum October 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.).
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <guessus.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy¶4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <guessus.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy¶4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, that respondent could not lay claim to rights or legitimate interests in the domain name under Policy¶4(c)(i).
We also note Complainant’s further assertion, to which Respondent likewise does not object, that Respondent earlier used the <guessus.us> domain name to pass itself off as Complainant online in order to profit from the sale of counterfeit goods purporting to be those of Complainant. Because such a use of the domain name is inherently illegitimate, it cannot be said that this use satisfies the express requirement of Policy¶4(c)(ii) that Respondent’s use of the domain name be “in connection with a bona fide offering of goods or services.” See, for example, eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum November 30, 2007) (concluding that the sale of counterfeit products on a resolving website was evidence that a UDRP respondent did not make a bona fide offering of goods or services by means of a disputed domain name).
We turn then to Complainant’s contention, which Respondent, once again, does not deny, that Respondent has not been commonly known by the challenged <guessus.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “Ronald Valenzuela,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(iii). See, for example, Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum December 10, 2018) (concluding that a respondent was not commonly known by the domain name <appbittrex.com> where the pertinent WHOIS information listed that respondent only as “Operi Manaha.”
Finally, under this head of the Policy, because Complainant alleges in its Complaint that Respondent seeks to profit from the sale of counterfeit versions of Complainant’s products at the website resolving from the <guessus.us> domain name, while Respondent does not respond to this assertion, we must conclude that Respondent is not making a legitimate noncommercial or fair use of the domain name within the contemplation of Policy¶4(c)(iv). See, for example, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no legitimate noncommercial or fair use of a challenged domain name existed where a respondent used a resolving website to sell products branded with a UDRP complainant’s mark, and were either counterfeit products or legitimate products of Complainant being resold without its authorization).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence before us that Respondent’s sole use of the contested <guessus.us> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy¶4(b)(iii), this stands as proof of Respondent’s bad faith both in both registering and using the domain name. See, for example, Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017):
Respondent’s primary offering seem to be counterfeits of Complainant’s … products. Respondent’s use of the … domain name is thus disruptive to Complainant’s business per Policy¶ 4(b)(iii).
Moreover, it is apparent from the record that Respondent knew of Complainant and its rights in the GUESS mark when it registered the <guessus.us> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO December 18, 2000) (finding that a respondent knew of a UDRP complainant’s mark when it registered a confusingly similar domain name, and further found that that respondent registered the disputed domain name in bad faith).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <guessus.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 13, 2023
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