Mary Kay Inc. v. Harmatov Likom / Private Person
Claim Number: FA2206002000114
Complainant is Mary Kay Inc. ("Complainant"), represented by Emma K. Morehart of Vorys, Sater, Seymour and Pease LLC, Ohio, USA. Respondent is Harmatov Likom / Private Person ("Respondent"), Tajikistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marykay.tv>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2022; the Forum received payment on June 13, 2022.
On June 14, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <marykay.tv> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@marykay.tv. Also on June 16, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
A. Complainant
Complainant has used the MARY KAY mark in connection with cosmetics and other products and services since 1963. Complainant owns longstanding United States trademark registrations for MARY KAY in standard character and stylized form, along with similar registrations in Russia, and contends that the mark has become famous as a result of Complainant’s worldwide use of the mark for more than half a century.
Respondent registered the disputed domain name <marykay.tv> in April 2015. It is being used for a Russian-language website that prominently and repeatedly displays Complainant’s MARY KAY mark (in both standard character form and a stylized form used by Complainant), and that purports to sell products bearing Complainant’s trademarks. Complainant states that the website includes copyrighted text and images owned by Complainant. Complainant states further that Respondent is not commonly known by the domain name, has no relationship with Complainant, and is not authorized or licensed to sell Complainant’s products or use its marks.
Complainant contends on the above grounds that the disputed domain name <marykay.tv> is identical or confusingly similar to its MARY KAY mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <marykay.tv> corresponds to Complainant's registered MARY KAY trademark, with the space omitted and the ".tv" top-level domain appended thereto. The addition of a top-level domain is normally irrelevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Mary Kay, Inc. v. Nguyet Dang, FA 1557894 (Forum June 12, 2014) (finding <marykay.co> identical to MARY KAY). The Panel considers the disputed domain name to be identical to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been for a website that attempts to pass off as Complainant, promoting unauthorized and likely counterfeit versions of Complainant’s products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Mary Kay Inc. v. Marina, FA 1997398 (Forum June 21, 2022) (finding lack of rights or interests in similar circumstances); Mary Kay Inc. v. Владимир Куксенко, FA 1988755 (Forum May 6, 2022) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name corresponding to Complainant's registered mark without authorization, and is using it for a website that attempts to pass off as Complainant, promoting unauthorized and likely counterfeit versions of Complainant’s products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Mary Kay Inc. v. Marina, supra (finding bad faith in similar circumstances); Mary Kay Inc. v. Владимир Куксенко, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marykay.tv> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 12, 2022
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