Mary Kay Inc. v. Jet Stream Enterprises Limited
Claim Number: FA0909001286672
Complainant is Mary Kay Inc. (“Complainant”), represented by John
D. Wiseman, of Mary Kay Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <marykayinouch.com>, registered with Tucows Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2009.
On September 30, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <marykayinouch.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 October 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 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@marykayinouch.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 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant 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 family of marks with the United States Patent and Trademark Office (“USPTO”) dating back to October 25, 1966 (Reg. No. 817,516).
Additionally, Complainant owns a trademark registration for the MARY KAY INTOUCH mark with the USPTO (Reg. No. 2,122,018, issued December 16, 1997).
Respondent has never received any authorization, license or permission to use Complainant’s marks in any way.
Respondent registered the <marykayinouch.com> domain name on September
26, 2004.
Respondent is not commonly known by the <marykayinouch.com> domain name.
Respondent’s disputed domain name resolves to a website displaying links to third-party websites offering body care and cosmetics products in competition with the business of Complainant.
Respondent’s <marykayinouch.com> domain name is confusingly similar to Complainant’s MARY KAY INTOUCH mark.
Respondent does not have any rights or legitimate interests in the domain name <marykayinouch.com>.
Respondent registered and uses the <marykayinouch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MARY KAY IN TOUCH
mark for purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO.
See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23,
2006) (finding that where a complainant had submitted evidence of its mark registration
with the USPTO, “such evidence establishes complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i).”)
Complainant argues that Respondent’s <marykayinouch.com> domain name is confusingly similar to Complainant’s MARY KAY INTOUCH mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains a misspelled version of Complainant’s mark and merely adds the generic top-level domain (“gTLD”) “.com.” A disputed domain name that contains a misspelled version of a complainant’s mark, in this case the deletion of a “t,” fails to distinguish itself mark and instead creates a confusing similarity between the domain name and the mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a tendency to be confusingly similar to the mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but renders a domain name confusingly similar to a complainant’s marks).
Likewise, the addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the Panel finds that Respondent’s disputed <marykayinouch.com> domain name is confusingly
similar to Complainant’s MARY KAY INTOUCH mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights or legitimate interests in the domain pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has established a prima facie case, and Respondent has failed to submit a Response in this proceeding. We are therefore entitled to conclude that Respondent has no rights or interests in the contested domain which are cognizable under the Policy. 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).
We will nonetheless examine the record before us to determine if there is in it any basis for concluding that Respondent has any such rights or interests.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed <marykayinouch.com> domain name, and that Respondent has never received from Complainant any authorization, license or permission to use Complainant’s marks in any way. Moreover, the relevant WHOIS information identifies the registrant of the disputed domain name only as “Jet Stream Enterprises Limited.” Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that 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 that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We also note that there is no dispute as to Complainant’s
assertion to the effect that Respondent’s disputed domain name resolves to a website featuring click-through
links and advertisements for Complainant’s competitors in the body care and
cosmetics industry. This use of the disputed
domain name, presumably for financial 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 of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). See Expedia,
Inc. v. Compaid, FA
520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use
of the <expediate.com> domain name to redirect Internet users to a
website featuring links to travel services that competed with the business of a
complainant 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 domain pursuant to Policy ¶ 4(c)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb.
Forum Feb. 16, 2007) (concluding that using a contested domain name to divert
Internet users to competing commercial websites does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii)).
We must also take note of the fact that Respondent’s domain
name qualifies as typo-squatting, given the obviously calculated misspelling of
the MARY KAY INTOUCH mark. Respondent’s
attempt thus to capitalize on the typographical errors of Internet users in
searching for information about Complainant constitutes evidence that
Respondent lacks rights to and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the domain
names <ltdcommadities.com>, <ltdcommmodities.com>, and
<ltdcommodaties.com> were intentional misspellings of Complainant's LTD
COMMODITIES mark and that this “‘typosquatting’ is evidence that Respondent
lacks rights or legitimate interests in the disputed domain names”); see also Microsoft
Corp. v. Domain Registration
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent’s <marykayinouch.com> domain name
resolves to a website that promotes Complainant’s competitors in the body care
and cosmetics industry through click-through links. This clearly disrupts Complainant’s business,
because Internet users seeking Complainant’s products will be redirected to
Complainant’s competitors. It therefore
qualifies as bad faith registration and use of the contested domain name under
Policy ¶ 4(b)(iii).
See
On the facts before us, Respondent has created a likelihood
of confusion between Complainant’s mark and the disputed domain name, evidently
for commercial gain through the receipt of referral fees accrued when Internet
users click on the competitive links, as to the possibility that Complainant
may be the source of or otherwise affiliated with the disputed domain name and the resolving
website. This constitutes evidence that
Respondent has registered and uses the disputed domain name in bad faith under
Policy ¶ 4(b)(iv).
See Asbury Auto. Group, Inc. v.
Finally under this head, we conclude that Respondent’s <marykayinouch.com> domain name is merely a typo-squatted version of Complainant’s MARY KAY INTOUCH mark, and that such typo-squatting constitutes additional evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003):
Respondent’s registration and use of the
disputed domain name demonstrates a practice commonly referred to as
‘typosquatting.’ This practice diverts
Internet users who misspell Complainant’s mark to a website apparently owned by
Respondent for Respondent’s commercial gain.
‘Typosquatting’ has been recognized as evidencing bad faith registration
and use….
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <marykayinouch.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 12, 2009
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