national arbitration forum

 

DECISION

 

Mary Kay Inc. v. Bunie.com

Claim Number: FA0909001285042

 

PARTIES

Complainant is Mary Kay Inc. (“Complainant”), represented by John D. Wiseman, of Mary Kay Inc., Texas, USA.  Respondent is Bunie.com (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wwwmarykay.com> and <maykay.com>, registered with Enom, Inc.

 

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 submitted a Complaint to the National Arbitration Forum electronically on September 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2009.

 

On September 18, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwmarykay.com> and <maykay.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names.  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 22, 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@wwwmarykay.com and postmaster@maykay.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 the Honorable Charles K. McCotter, Jr. (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wwwmarykay.com> and <maykay.com> domain names are confusingly similar to Complainant’s MARY KAY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wwwmarykay.com> and <maykay.com> domain names.

 

3.      Respondent registered and used the <wwwmarykay.com> and <maykay.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Mary Kay Inc., is one of the top sellers of color cosmetic and facial skin products in the United States and worldwide, utilizing an independent contractor sales force of more than 1.8 million people over thirty-five foreign markets.  Complainant commenced use of the MARY KAY mark at least as early as 1963 in connection with the distribution of body care products and cosmetics.  Complainant is the owner of at least nineteen 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, Bunie.com, registered the <wwwmarykay.com> domain name on January 13, 2000 and registered the <maykay.com> domain name on February 13, 2000.  The disputed domain names each resolve to an unrelated commercial website at the <terapeak.com> domain name.  Complainant also alleges that Respondent has been subjected to at least three previous adverse UDRP proceedings, each resulting in the transfer of the infringing domain name to the respective complainant.  See Freightliner LLC v. Bunie.com, FA 528542 (Nat. Arb. Forum Sept. 20, 2005) (transferring <frieghtliner.com>); see also DaimlerChrysler AG v. Bunie.com, FA 519308 (Nat. Arb. Forum Sept. 7, 2005) (transferring <chysler.com> and <daimlerchysler.com>); see also Pac. Sunwear of Cal., Inc. v Bunie.com, FA 1248927 (Nat. Arb. Forum May 8, 2009) (transferring <pacficsunwear.com>, <pacsunwear.com>, and <pasificsunwear.com>)

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the MARY KAY mark for the purposes of Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO (e.g., Reg. No. 817,516 issued October 25, 1966).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

Respondent’s <wwwmarykay.com> domain name incorporates Complainant’s MARY KAY mark in its entirety with the only alterations being the addition of the prefix “www” and the affixation of the generic top-level domain “.com.”  Respondent’s <maykay.com> domain name incorporates the distinctive portion of Complainant’s MARY KAY mark with the mere omission of the letter “r” and the affixation of the generic top-level domain “.com.”  The Panel finds that these alterations fail to sufficiently distinguish Respondent’s disputed domain names from Complainant’s MARY KAY mark.  Thus, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s MARY KAY mark under Policy ¶ 4(a)(i).  See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also  Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden then shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain names.  The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii).  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  However, Respondent has failed to respond to the allegations against it.  Subsequently, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).  The Panel will however, examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). 

 

Respondent’s <wwwmarykay.com> and <maykay.com> domain names each redirect Internet users to the unrelated commercial website resolving from the <terapeak.com> domain name.  The Panel presumes that Respondent is profiting from this diversion scheme and thus, the Panel concludes that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant contends that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii) because Respondent is not commonly known by either of the disputed domain names.  The relevant WHOIS information identifies the registrant as “Bunie.com” which does not bear any resemblance to either of the disputed domain names.  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names under 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

Moreover, Respondent’s <maykay.com> domain name contains a misspelled version of Complainant’s MARY KAY mark, specifically, the omission of the letter “r.”  Complainant has alleged that this constitutes typosquatting.  Respondent also engages in typosquatting through its use of the <wwwmarykay.com> domain name because the disputed domain name includes Complainant’s mark in its entirety with the addition of the “www” prefix.  The Panel finds that these alterations constitute typosquatting because they take advantage of Internet users that accidentally misspell Complainant’s mark.  The Panel finds that Respondent has engaged in typosquatting which is further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

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

Registration and Use in Bad Faith

 

Complainant contends that Respondent has previously been subjected to at least three adverse UDRP proceedings, each resulting in the transfer of the infringing domain name to the respective complainant.  See Freightliner LLC v. Bunie.com, FA 528542 (Nat. Arb. Forum Sept. 20, 2005) (transferring <frieghtliner.com>); see also DaimlerChrysler AG v. Bunie.com, FA 519308 (Nat. Arb. Forum Sept. 7, 2005) (transferring <chysler.com> and <daimlerchysler.com>); see also Pac. Sunwear of Cal., Inc. v Bunie.com, FA 1248927 (Nat. Arb. Forum May 8, 2009) (transferring <pacficsunwear.com>, <pacsunwear.com>, and <pasificsunwear.com>).  Respondent has a history of cybersquatting, which constitutes a pattern of bad faith registration and use of domain names.  The Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(ii).  See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)].  The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).

 

The <wwwmarykay.com> and <maykay.com> disputed domain names which were registered on January 13, 2000 and February 13, 2000, respectively, each resolve to the unrelated commercial website located at the <terapeak.com> domain name.  The Panel presumes that Respondent is profiting through this diversion scheme and thus, Respondent is attempting to capitalize on the goodwill that Complainant has established in its MARY KAY mark.  Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). 

 

Finally, Respondent’s use of the <wwwmarykay.com> and <maykay.com> domain names constitutes typosquatting because the disputed domain names incorporate common typing errors, namely, omitting the period after the “www” and omitting the letter “r” from Complainant’s MARY KAY mark.  Therefore, the Panel finds that Respondent’s engagement in the practice of typosquatting constitutes bad faith registration and use under Policy 4(a)(iii).  See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).

 

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

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwmarykay.com> and <maykay.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

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

Dated:  October 24, 2009

 

 

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