Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2205001998635
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 (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-portugal.com>, (‘the Domain Name’) registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2022; the Forum received payment on May 31, 2022.
On June 2, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <guess-portugal.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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-portugal.com. Also on June 3, 2022, 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 July 3, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 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.” Guess? IP Holder LP is indirectly wholly owned by Guess? Inc. and the latter is a licensee. The panel holds that there is sufficient nexus for both companies to bring this Complaint.
A. Complainant
Complainant owns the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered, inter alia, in the USA for clothing.
The Domain Name is confusingly similar to Complainant’s GUESS mark merely adding the descriptive geographical term ‘portugal’ and a hyphen which do not distinguish the Domain Name from the Complainant’s mark.
The addition of the gTLD “.com” is irrelevant to the confusing similarity analysis.
Respondent has no right or legitimate interest in the Domain Name. Respondent is not commonly known by the Domain Name. The Complainant has not licensed the Respondent to use the Complainant’s mark. The Domain Name registered in 2022 has been pointed to a web site purporting to sell the Complainant’s clothing using the Complainant’s mark in its logo form as a masthead and using images from the Complainant to suggest the site is an official site of the Complainant, but is selling counterfeit goods. The use is commercial so this cannot be legitimate non commercial or fair use of the Domain Name. The Domain Name has been registered and used in bad faith confusing and diverting Internet users for commercial gain and disrupting the Complainant’s business with competing activity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered, inter alia, in the USA for clothing.
The Domain Name registered in 2022 has been used for a site selling clothing purporting to be an official site of the Complainant using the Complainant’s mark as a masthead in logo form and material from the Complainant without permission.
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 Domain Name in this Complaint combines the Complainant’s GUESS mark (registered in the USA and Portugal for clothing with first use recorded as 1981), a hyphen, the generic term ‘Portugal’ and the gTLD “.com”.
Punctuation marks such as hyphens and the addition of generic geographical terms do not serve to distinguish the Domain Name from the Complainant’s GUESS mark which is still identifiable within the Domain Name. 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 and the differences between the domain name and the mark it contains are insufficient to differentiate one from the other for the purposes of the Policy). See also Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s GUESS mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a domain name is irrelevant to a Policy 4(a)(i) analysis).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Name. The Complainant has not authorized the Respondent to use the Complainant’s GUESS mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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 use of the Domain Name is commercial and so cannot be legitimate non commercial use.
The web site attached to the Domain Name has been using the Complainant's mark and its logo as a masthead and material taken from the Complainant’s site to offer goods purporting to be those of the Complainant. It did not make it clear that there is no commercial connection between the site itself and the Complainant and the web site appears official. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.).
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade mark in this way.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it has been offering products under the Complainant’s mark in its logo form as a masthead and using material taken from the Complainant’s site giving the impression that the site attached to the Domain Name is official. The use of the Complainant’s logo and the use of material from the Complainant’s site on the site attached to the Domain Name proves that the Respondent is aware of the Complainant and the Complainant’s rights, business and products.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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-portugal.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 5, 2022
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