Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2209002010830
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guessencolombia.com>, <guess-sverige.com>, <guessoutletcz.com>, <outletguesschile.com>, and <magasinguessfrance.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on September 2, 2022; Forum received payment on September 2, 2022.
On September 07, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <guessencolombia.com>, <guess-sverige.com>, <guessoutletcz.com>, <outletguesschile.com> , and <magasinguessfrance.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. 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 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@guessencolombia.com, postmaster@guess-sverige.com, postmaster@guessoutletcz.com, postmaster@outletguesschile.com, postmaster@magasinguessfrance.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 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant offers men’s and women’s apparel and related goods.
Complainant has rights in the GUESS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and elsewhere.
Respondent’s <guessencolombia.com>, <guess-sverige.com>, <guessoutletcz.com>, <outletguesschile.com>, and <magasinguessfrance.com> domain names are confusingly similar to Complainant’s mark because they incorporate the GUESS mark in its entirety and add a geographic term, a generic term, and add the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <guessencolombia.com>, <guess-sverige.com>, <guessoutletcz.com>, <outletguesschile.com>, or <magasinguessfrance.com> domain names. Respondent is not commonly known by any at-issue domain name and Complainant has not authorized or licensed Respondent any rights in the GUESS mark. Additionally, Respondent does not use any domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the at-issue domain names are used to pass off as Complainant and offer counterfeit products.
Respondent registered and uses the <guessencolombia.com>, <guess-sverige.com>, <guessoutletcz.com>, <outletguesschile.com>, and <magasinguessfrance.com> domain names in bad faith. Respondent registered the at-issue domain names in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the domain names with actual knowledge of Complainant’s rights in the GUESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GUESS trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the GUESS trademark.
Respondent uses the at-issue domain names to address a website designed to mimic Complainant’s official website and there offers counterfeit goods for sale.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has multiple USPTO registrations for its GUESS trademark as well as other national registrations worldwide. Any one of such registrations is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s at-issue domain names each contain Complainant’s entire GUESS mark with extraneous terms added. Each domain name-concludes with the “.com” generic top-level domain. The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish any of the domain names from Complainant’s GUESS mark for the purposes of Policy ¶ 4(a)(i). Notably, the inclusion of geographic locations where Complainant may do business in the domain names only increases any confusion between the at-issue domain names and Complainant’s mark. Therefore, the Panel concludes that Respondent’s at-issue domain names are each confusingly similar to Complainant’s GUESS trademark. 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).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain names ultimately identifies the domain names’ registrant as “Client Care” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any of the domain names or by Complainant’s GUESS trademark. The Panel therefore concludes that Respondent is not commonly known by the any of the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar domain names to pass itself off as Complainant and address a website mimicking Complainant’s genuine website that features counterfeit clothing, apparel, and accessories for sale designed to look like Complainant’s goods, with multiple imitation products featuring the GUESS mark(s). Respondent’s use of the confusingly similar domain names in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain names under Policy ¶ 4(a)(ii).
Respondent’s at-issue domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each of the domain names.
First, Respondent uses its confusingly similar domain names to address a website that mimics Complainant’s genuine website by dressing the faux site with Complainant’s intellectual property. There, Respondent offers counterfeit goods for sale. By passing itself off as Complainant and offering counterfeit goods Respondent disrupts Complainant’s business and attracts internet users for commercial gain thereby showing its bad faith registration and use of the at-issue domain names under Policy ¶¶ 4(b)(iii) and (b)(iv). Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in GUESS. Respondent’s prior knowledge is shown by the notoriety of Complainant’s GUESS mark and by Respondent’s use of the domain names to pass itself off as Complainant to trade on Complainant’s mark as discussed elsewhere herein. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessencolombia.com>, <guess-sverige.com>, <guessoutletcz.com>, <outletguesschile.com>, and <magasinguessfrance.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 9, 2022
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