START-UP TRADEMARK OPPOSITION POLICY

DECISION

GUESS? Inc. v. Lee Koon Joo

Claim Number: FA0112000102949

PARTIES

The Complainant is GUESS? Inc., Los Angeles, CA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  The Respondent is Lee Koon Joo, Kuala Lumpur, MALAYSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <guess.biz>, registered with Register.com.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on December 13, 2001; the Forum received a hard copy of the Complaint on .

On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <guess.biz> domain name is identical to Complainant's GUESS mark.

Respondent has no rights or legitimate interests in the <guess.biz> domain name.

Respondent registered the <guess.biz> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1981, Complainant has used the GUESS mark in commerce in relation to its clothing line.  Complainant is a famous clothing manufacturer and owns numerous trademark registrations around the world and in the United States.  Complainant operates over 300 stores worldwide and nine in Malaysia, the place of Respondent's domicile.  Complainant's mark is famous and represents invaluable goodwill throughout the world.

In 1995, Complainant expanded its retail base to the Internet by launching a virtual retail store located at <guess.com>.

Respondent registered the disputed domain name on November 19, 2001.  Respondent is an individual living in Malaysia.  Complainant's investigation has not found evidence of any trademark or service mark registrations owned by Respondent.  Furthermore, Complainant's investigation has not found any companies in Malaysia doing business under the name GUESS that are related to Respondent.

DISCUSSION

Paragraph 15(a) of the STOP 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established that it has rights in the GUESS mark because it has been using the GUESS mark in commerce since 1981 in relation to its famous line of clothing.  Furthermore, Complainant has registered the mark throughout the world.  The <guess.biz> domain name is identical to Complainant's GUESS mark.

Therefore, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has not demonstrated rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Complainant has established that it has rights in the disputed domain name because it has used the GUESS mark in commerce since 1981 and established invaluable goodwill.  Furthermore it is the owner of numerous trademarks throughout the world.  Respondent has not come forward to offer evidence that it has any rights in the GUESS mark, or that it owns any trademarks or service marks incorporating the word anywhere in the world.  Therefore Respondent has not demonstrated any rights or legitimate interests in the <guess.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

Furthermore, based on the famous and distinctive nature of Complainant's GUESS mark, any planned use by Respondent of the <guess.biz> domain name, identical to Complainant's famous mark would be an opportunistic attempt to attract customer's via Complainant's famous mark. This is not considered a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <guess.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Because of the famous and distinctive nature of Complainant's GUESS marks, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <guess.biz> domain name.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

Based on the circumstances, it can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from using its GUESS mark in a corresponding domain name.  This behavior is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii).  See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <guess.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

The Honorable Charles K. McCotter, Jr., Panelist

Dated: January 31, 2002

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