WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guess? IP Holder L.P. and Guess? Inc. v. Domain Admin: Damon

Nelson - Manager, Quantec LLC, Novo Point LLC

Case No. D2017-1350

1. The Parties

The Complainants are Guess? IP Holder L.P. and Guess? Inc. of Los Angeles, California, United States of America (“United States” or “USA”), represented by Lewis Roca Rothgerber Christie LLP, USA.

The Respondent is Domain Admin: Damon Nelson - Manager, Quantec LLC, Novo Point LLC of Dallas, Texas, USA.

2. The Domain Name and Registrar

The disputed domain name <guessaccessories.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2017. On July 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2017.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 14, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainants are Guess? Inc. (“Guess?”), a Delaware corporation listed on the New York Stock Exchange, and its affiliate Guess? IP Holder L.P., a Delaware limited partnership that manages the corporation’s trademarks and other intellectual property. Both are headquartered in Los Angeles, California, USA. According to the Complaint and the Complainants’ investor’s website at “www.investors.guess.com”, Guess? started manufacturing and selling designer jeans in California in 1981, incorporated in 1993, and grew into a “global lifestyle brand” with substantial online sales, as well as more than 1,300 retail stores worldwide, with annual sales exceeding USD 2 billion in 2016. Guess? sells clothing and also licenses the manufacture and distribution of a range of accessories for women, men, and children, including eyewear, watches, handbags, footwear, fragrances, and jewelry.

The Complainant Guess? or its predecessor registered the following trademarks, currently assigned to the Complainant Guess? IP Holder L.P., as shown in the trademark database of the United States Patent and Trademark Office:

According to the Registrar’s WhoIs database, the Domain Name was created on June 16, 2005, and is currently registered by the registrant Damon Nelson on behalf of two registrant organizations, both apparently limited liability companies with the same postal address in Dallas, Texas, USA. The online database of the Texas Comptroller of Public Accounts does not have a listing for one of the named companies, Novo Point LLC. The other, Quantec LLC, may be the company by that name listed in the Texas database as “involuntarily ended” and requiring reinstatement as an entity. No response was submitted in this proceeding. Thus, there is no evidence in the record that a legal entity corresponding to the “registrant organizations” actually exists, and the organizations may be merely alter egos for the registrant Damon Nelson. The Panel will hereafter refer to Damon Nelson and both putative limited liability companies collectively as the “Respondent”.

The Domain Name initially resolved to a parking website with pay-per-click (“PPC”) advertising links to a variety of third-party commercial websites. At the time of this decision, the Domain Name redirects Internet users, through an automated intermediary website, to the website of “Kohl’s Illinois, Inc.”, a major United States clothing retailer, at “www.kohls.com”. Kohl’s competes with the Complainant in the market for a wide range of apparel and accessories in the United States.

5. Parties’ Contentions

A. Complainant

The Complainants assert that the Domain Name is confusingly similar to their GUESS and GUESS? marks and that the Respondent has no permission or other evident rights or legitimate interests in using a confusingly similar Domain Name. The Complainants infer that the Domain Name was registered and used in bad faith, to exploit the Complainants’ trademark, pointing to the Respondent’s pattern of registering domain names incorporating famous trademarks.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Panel finds that both Complainants have rights in the registered GUESS and GUESS-formative trademarks (collectively, the “GUESS” marks) for UDRP purposes. The Domain Name incorporates the GUESS mark in its entirety and adds the dictionary word “accessories”. As noted under section 6.C. below, “Guess” itself is a dictionary word, but the addition of “accessories” may reinforce rather than diminish the confusing similarity with the Complainants’ mark, as the Complainant Guess? sells and licenses
GUESS-branded fashion accessories.

The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

Here, the Complainants have demonstrated trademark rights and confusing similarity, and the Complainants deny any association with the Respondent. The Respondent has not come forward with any evidence of rights or legitimate interests, and the Respondent has not developed a website associated with the Domain Name, from which such rights or interests could be inferred. The Panel concludes that the second element of the Complaint has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainants (in which “you” refers to the registrant of the domain name):

“(ii) you have 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 you have engaged in a pattern of such conduct; or

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

Reliance on paragraph 4(b)(ii) is dubious, as the Complainants have several websites corresponding to their GUESS mark, but the Respondent’s pattern of practice is helpful in establishing the Respondent’s likely intentions in registering and using the Domain Name to exploit the Complainants’ GUESS marks for commercial gain, in the manner contemplated by paragraph 4(b)(iv).

It appears that the Domain Name has been used only for PPC advertising and it currently redirects automatically to one of the Complainants’ direct competitors, presumably generating PPC revenue for the party that controls the Domain Name. Although “guess” is a dictionary word in English, it has peculiar value as a popular brand of clothing and accessories, and the Domain Name’s combination of the latter word with “accessories” is unlikely to be accidental. The Panel finds on the available record that the circumstances accord with an intent to create confusion as to source, for commercial gain.

The Complainants demonstrate that a reverse WhoIs data search shows that as of June 29, 2017, the Respondent “Quantec LLC” was listed as the registrant of 52 domain names, many of which are clearly based on well-known trademarks, some with slight misspellings in classic cybersquatting fashion. Examples include <angiesslist.com>, <barclayscardsus.com>, <capitalonefinancing.com>, <enfamilcoupons.com>, <enterpraiserentcar.com>, <everhomemotgage.com>, <jobfandango.com>, <lenouvo.com>, <libertymutualins.com>, <linkedlin.com>, <newportcigerettes.com>, <zoneperect.com>. At that time, Quantec LLC was also listed as the Respondent in at least 24 UDRP proceedings. At least two UDRP proceedings have already resulted in findings of bad faith on the part of the same Respondent: Chocoladefabriken Lindt & Sprüngli AG v. Whois Privacy Services Pty Ltd./Damon Nelson - Manager - Quantec, LLC/ Novo Point, LLC, WIPO Case No. D2015-0311; Saia, Inc. v. Whois Privacy Services Pty Ltd / Damon Nelson - Manager, Quantec, LLC/Novo Point, LLC, WIPO Case No. D2014-1158. This pattern tends to support the inference that the Respondent, who has not come forward with an alternative explanation in this proceeding, similarly meant to exploit the Complainants’ long-established and well-known GUESS marks.

The Panel concludes that the third element of the Complaint has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <guessaccessories.com>, be transferred to the Complainant Guess? IP Holder L.P., the holder of the GUESS trademark registrations.

W. Scott Blackmer
Sole Panelist
Date: August 24, 2017