Mary Kay Inc. v. Open Water Enterprises Limited c/o Louis S
Claim Number: FA0909001286701
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 <mayrkay.com>, registered with Fabulous.com Pty Ltd.
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.
Tyrus R. Atkinson, Jr., 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, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <mayrkay.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 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@mayrkay.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 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mayrkay.com> domain name is confusingly similar to Complainant’s MARY KAY mark.
2. Respondent does not have any rights or legitimate interests in the <mayrkay.com> domain name.
3. Respondent registered and used the <mayrkay.com> domain name 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’s <mayrkay.com> domain name was registered
on December 19, 2003. Respondent’s
disputed domain name resolves to a website displaying third-party links to
websites offering body care products and cosmetics in competition with
Complainant.
Complainant
offers evidence that Respondent has a history of registering domain names
infringing upon the trademark rights of others, and has been ordered by
previous UDRP panels to transfer the disputed domain names to the respective
complainants. See Deloitte Touche Tohmatsu v. Open Water Enter. Ltd., D2008-1632 (WIPO Oct. 12, 2008); Retail Brand
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.
Complainant has obtained a number of trademark registrations
for the MARY KAY mark with the USPTO (e.g., Reg. No. 817,516 issued October 25,
1966). The Panel finds that Complainant
has established rights in the MARY KAY mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration 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.”).
Complainant contends that Respondent’s <mayrkay.com> domain name is confusingly similar to Complainant’s
MARY KAY mark pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed domain name contains a misspelled version of
Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a disputed domain name
that contains a misspelled version of a complainant’s mark, in this case, the
letters “r” and “y” transposed, creates a confusing similarity between the
disputed domain name and the complainant’s mark because the transposition of two
characters is a likely typing mistake. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb.
Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com>
domain names to be confusingly similar to the complainant’s WYNDHAM mark
because the domain names merely transposed letters in the mark); see also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <mayrkay.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <mayrkay.com> domain name under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known by the <mayrkay.com> domain name pursuant to Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain name as “Open Water Enterprises Limited c/o Louis S,” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the <mayrkay.com> domain name. Therefore, the Panel finds 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 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).
Respondent’s <mayrkay.com>
domain name resolves to a website featuring click-through links and
advertisements for Complainant’s competitors in the body care and cosmetics
industry. The Panel finds that
Respondent’s use of the disputed domain name to redirect Internet users to
Complainant’s competitors, presumably for financial gain, does not constitute a
bona fide offering of goods or services
or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or
(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of
the complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Metro. Life Ins. Co.
v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar
domain name to divert Internet users to competing 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)).
Respondent’s <mayrkay.com>
domain name qualifies as typosquatting, given the transposition of two letters
in the MARY KAY mark. As such,
Respondent’s attempt to capitalize on the typographical errors of Internet
users constitutes evidence that Respondent lacks rights 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 <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”); see also Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in other UDRP
proceedings, wherein the disputed domain names were ordered to be transferred
from Respondent to the respective complainants in those cases. See Deloitte Touche
Tohmatsu v. Open Water Enter. Ltd., D2008-1632
(WIPO Oct. 12, 2008); see also Retail Brand Alliance Inc. v. Open Water
Enter. Ltd., FA 1153556 (Nat.
Arb. Forum April 16, 2008). The
Panel finds that Respondent has therefore engaged in a pattern of bad faith
registration and use under the parameters of Policy ¶ 4(b)(ii). See Arai
Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the
disputed domain name, <aria.com>, to prevent Complainant from registering
it” and taking notice of another Policy proceeding against the respondent to
find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v.
Respondent’s <mayrkay.com>
domain name resolves to a website that promotes Complainant’s competitors in
the body care and cosmetics industry through click-through links. Such an activity clearly disrupts
Complainant’s business, as Internet users seeking Complainant’s products will
be redirected to Complainant’s competitors.
This qualifies as bad faith registration and use under Policy ¶
4(b)(iii). See
Additionally, Respondent has created a likelihood of confusion
for commercial gain as to Complainant’s source and affiliation with the <mayrkay.com> domain name and the
resolving website. Respondent is
presumably monetarily benefiting through the receipt of referral fees accrued
when Internet users click on the competitive links. This constitutes further evidence that
Respondent has registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v.
The Panel has already determined that Respondent has engaged
in typosquatting. This practice has been
found to constitute evidence by itself of bad faith registration and use under
Policy ¶ 4(a)(iii). See, e.g., Nextel Commc’ns
Inc. v. Geer, FA 477183 (Nat.
Arb. Forum July 15, 2005) (finding that the respondent’s registration and use
of the <nextell.com> domain name was in bad faith because the domain name
epitomized typosquatting in its purest form).
Therefore, the Panel finds that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(a)(iii).
See Dermalogica, Inc. v. Domains to Develop, FA
175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that
the <dermatalogica.com> domain name was a “simple misspelling” of the
complainant's DERMALOGICA mark which indicated typosquatting and
bad faith pursuant to Policy 4 ¶ (a)(iii)).
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 <mayrkay.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 12, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum