Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2209002010811
Complainants are Guess? IP Holder L.P. and Guess?, Inc. (“Complainants”), United States of America (“United States”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, United States. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guessfactoryoutletcanada.com>, <guessaustraliasale.com>, <guesscanadaoutlet.com>, <guessonlinecanada.com>, and <guessfactoryincanada.com>, <guessaustraliaonline.com> (the “disputed domain names”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on September 2, 2022; Forum received payment on September 2, 2022.
On September 06, 2022, the Registrar confirmed by e-mail to Forum that the disputed domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the disputed domain names. The Registrar 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 September 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@guessfactoryoutletcanada.com, postmaster@guessaustraliasale.com, postmaster@guesscanadaoutlet.com, postmaster@guessonlinecanada.com, postmaster@guessfactoryincanada.com, postmaster@guessaustraliaonline.com. Also on September 9, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2022, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 any response from Respondent.
Complainants request that the disputed domain names be transferred from Respondent to Complainants.
A. Complainants
Complainants own the world-famous GUESS brand which they have used for over 40 years in connection with their highly successful lines of men’s and women’s apparel and related goods. Complainants have rights in the GUESS trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433, 022, registered on March 17, 1987). Complainants also have rights in the GUESS trademark in other jurisdictions worldwide, including Canada and Australia (hereinafter collectively referred to as the “GUESS” Mark).
The GUESS Mark has acquired valuable goodwill and a prominent reputation, and is widely recognized by the consuming public as a designation of the source of the goods and services of Complainants, in the United States and other jurisdictions worldwide. Complainants operate over 1,300 stores located in premier retailing locations in major markets worldwide. Additionally, Complainants have made billions of dollars of sales in connection with the GUESS Mark during the past 40 years.
Complainants contend that the disputed domain names are confusingly similar to the GUESS Mark because they incorporate the GUESS Mark in its entirety, adding geographic terms, descriptive or generic terms, and then adding the “.com” generic Top-Level Domain (“gTLD”). Complainants also claim that Respondent has no legitimate interests in the disputed domain names since the disputed domain names are used to pass off as Complainants. Finally, Complainants contend that Respondent registered and is using the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainants have rights in the GUESS Mark based on their trademark registrations in the United States and other jurisdictions worldwide. Registration with the USPTO and other world trademark offices is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain names are confusingly similar to Complainants’ GUESS Mark, as they incorporate the GUESS Mark in its entirety, merely adding geographic terms, descriptive or generic terms, and the “.com” gTLD. The Panel also finds that Respondent lacks rights or legitimate interests in the disputed domain names, and that Respondent registered and is using the disputed domain names in bad faith. The Panel concludes that the language of this proceeding is English.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Complainants’ undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences they consider 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 Panel finds that Complainants have rights in the GUESS Mark under Policy 4(a)(i). Complainants assert rights in the GUESS Mark based on their registrations with the USPTO (e.g., Reg. No. 1,433, 022, registered on March 17, 1987), as well as with other trademark offices worldwide. Registration of a trademark with multiple trademark agencies or offices is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
The Panel further finds that Respondent’s disputed domain names are confusingly similar to Complainants’ GUESS Mark as they wholly incorporate the mark in its entirety and adds geographic terms, several descriptive or generic terms, and the gTLD “.com.
The addition of geographic terms, descriptive or generic terms, and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”); see also 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, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainants.
Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Under the Policy, Complainants are required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond:
In support, the Panel finds that Respondent is not commonly known by the disputed domain names, nor have Complainants authorized or licensed Respondent to use its GUESS Mark in the disputed domain names. In addition, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using disputed domain names and their resolving websites to pass off as Complainants and copy parts of Complainants’ websites is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In addition, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain names to sell counterfeit goods on the website to which the disputed domain name resolve. Using a confusingly similar domain name to divert Internet users to a website that sells counterfeit goods featuring the GUESS Mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainants.
The Panel concludes that, based on the record, Respondent registered and is using the disputed domain names in bad faith.
First, the Panel concludes that Respondent has registered and is using the disputed domain names in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s resolving website by creating a likelihood of confusion with Complainants’ GUESS Mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Second, the fame of the GUESS Mark, which was used and registered by Complainants far in advance of Respondent’s registration of the disputed domain names, renders it wholly implausible that Respondent created the disputed domain names independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainants’ rights in the GUESS Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainants or their GUESS Mark when registering the disputed domain names. Thus, as here, prior knowledge of a complainant’s trademarks before registering a confusingly similar domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, Respondent attempts to pass off as Complainants, which is indicative of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). Moreover, the Panel finds that Respondent registered and is using the disputed domain names in bad faith because Respondent uses the disputed domain names to resolve to websites that sell counterfeit goods, purportedly those of the Complainants. Using a confusingly similar domain name to divert Internet users to websites that sell counterfeit goods is emblematic of bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainants.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessfactoryoutletcanada.com>, <guessaustraliasale.com>, <guesscanadaoutlet.com>, <guessonlinecanada.com> ,<guessfactoryincanada.com>, and <guessaustraliaonline.com> disputed domain names be TRANSFERRED from Respondent to Complainants.
Lynda M. Braun, Panelist
Dated: October 21, 2022
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