Mary Kay, Inc. v. Guillermo Machado a/k/a None c/o Amarachi Joseph
Claim Number: FA0909001283193
Complainant is Mary Kay, Inc. (“Complainant”), represented by Brandon M. Ress, of Fulbright & Jaworski, Texas, USA. Respondent is Guillermo Machado a/k/a None c/o Amarachi Joseph (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
At issue is the <marykayincorporated.com> domain name registered with Enom, Inc.; the <marykaycorporation.com> domain name registered with Active Registrar, Inc.; and the <marykayincoporated.com> domain name registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.
On September 8, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that <marykayincoporated.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 9, 2009, Active Registrar, Inc. confirmed by e-mail to the National Arbitration Forum that the <marykaycorporation.com> domain name is registered with Active Registrar, Inc. and that Respondent is the current registrant of the name. Active Registrar, Inc. has verified that Respondent is bound by the Active Registrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 10, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <marykayincorporated.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@marykayincorporated.com, postmaster@marykaycorporation.com, and postmaster@marykayincoporated.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <marykayincorporated.com>, <marykaycorporation.com>, and <marykayincoporated.com> domain names are confusingly similar to Complainant’s MARY KAY mark.
2. Respondent does not have any rights or legitimate interests in the <marykayincorporated.com>, <marykaycorporation.com>, and <marykayincoporated.com> domain names.
3. Respondent registered and used the <marykayincorporated.com>, <marykaycorporation.com>, and <marykayincoporated.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mary Kay, Inc., has been in the business of manufacturing and distributing body care products and cosmetics since 1963. Complainant owns numerous trademark registrations for the MARY KAY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 817,516 issued October 25, 1966).
Respondent registered the <marykayincoporated.com> domain name on September 1,
2009, the <marykayincorporated.com> and <marykaycorporation.com>domain
names on August 29, 2009. The disputed
domain names are being used to operate a phishing scheme in which Respondent
uses the disputed domain names to solicit job applications under Complainant’s
MARY KAY mark.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
The Panel finds that Complainant has established rights in
the MARY KAY mark for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant
had sufficiently established rights in the SKUNK WORKS mark through its
registration of the mark with the USPTO); see also Clear!Blue
Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5,
2007) (“The Panel finds that Complainant has established trademark rights in
the CLEAR BLUE marks through introduction of the certificates for its U.S.
registration for those trademarks. The
U.S. Trademark Act is clear that the certificate of registration on the
Principal Register, as here, is prima
facie evidence of the validity of the registered mark and the registrant's
exclusive right to use the mark in commerce in on or in connection with the
goods specified in the registration.”).
Respondent’s disputed domain names
are confusingly similar to Complainant’s MARY KAY mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
names contain Complainant’s mark in its entirety, add the generic terms
“incorporated,” “corporation,” or the misspelled generic term “incoporated,”
and add the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a
generic term or a misspelled generic term to a registered mark in a disputed
domain name creates a confusing similarity between the disputed domain name and
the registered mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding
the respondent’s <amextravel.com> domain name confusingly similar to
Complainant’s AMEX mark because the “mere addition of a generic or descriptive
word to a registered mark does not negate” a finding of confusing similarity
under Policy ¶ 4(a)(i)); see also Google Inc. v. Xtraplus Corp.,
D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names
were confusingly similar to Complainant’s GOOGLE mark where the respondent
merely added common terms such as “buy” or “gear” to the end). The Panel also finds that the addition of a
gTLD to a registered mark is irrelevant in distinguishing a disputed domain
name and a mark. See Jerry Damson, Inc. v. Tex. Int’l Prop.
Assocs., FA 916991 (Nat. Arb. Forum
Apr. 10, 2007) (“The mere addition of a generic top-level domain
(“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from
the mark.”); see also Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the
generic top-level domain “.com” is insufficient to differentiate a disputed
domain name from a mark). Therefore,
pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s
mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a response to these proceedings. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nonetheless, the Panel will examine the record against the Policy requirements.
Respondent’s WHOIS registration is evidence that Respondent is not commonly known by the disputed domain names, in that the registrant is listed as “Guillermo Machado a/k/a None c/o Amarachi Joseph.” Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Respondent registered the <marykayincoporated.com> domain name on September 1, 2009, and the <marykayincorporated.com> and <marykaycorporation.com> domain names on August 29, 2009. Respondent is using the disputed domain names to operate a phishing scheme, where Respondent passes itself off as Complainant and uses Complainant’s goodwill to lure Internet users into giving out their personal information in fake job applications. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”). The Panel finds that Respondent’s phishing activities are neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to pass itself off as Complainant in order to phish for Internet users personal information through email solicitation. The Panel finds that this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Respondent’s phishing scheme is creating a likelihood of confusion and perpetrating fraud, evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marykayincorporated.com>, <marykaycorporation.com>, and <marykayincoporated.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 26, 2009
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