national arbitration forum

 

DECISION

 

Mary Kay, Inc. v. Bunie.com

Claim Number: FA0911001295608

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mary-kay-cosmetics.com>, <marykayforless.com>, <marykaycosmetic.com>, and <mymaryk.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.

 

Hon. Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2009.

 

On November 20, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mary-kay-cosmetics.com>, <marykayforless.com>, <marykaycosmetic.com>, and <mymaryk.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 November 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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@mary-kay-cosmetics.com, postmaster@marykayforless.com, postmaster@marykaycosmetic.com, and postmaster@mymaryk.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 <mary-kay-cosmetics.com>, <marykayforless.com>, <marykaycosmetic.com>, and <mymaryk.com> domain names are confusingly similar to Complainant’s MARY KAY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <mary-kay-cosmetics.com>, <marykayforless.com>, <marykaycosmetic.com>, and <mymaryk.com> domain names.

 

3.      Respondent registered and used the <mary-kay-cosmetics.com>, <marykayforless.com>, <marykaycosmetic.com>, and <mymaryk.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.  Complainant has used its MARY KAY mark in commerce since 1963 in connection with these products.  Complainant holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 817,516 issued October 25, 1966).

 

Respondent, Bunie.com, registered the <marykayforless.com> domain name on February 6, 2000. Respondent registered the <marykaycosmetic.com> and <mymaryk.com> domain names on February 29, 2000.  Respondent registered the <mary-kay-cosmetics.com> on April 23, 2000.  The <mary-kay-cosmetics.com>, <marykayforless.com>, and <marykaycosmetic.com> domain names resolve to the unrelated commercial website at <terapeak.com>.  The <mymaryk.com> domain name does not resolve to any website.

 

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

 

Complainant has submitted evidence of numerous registrations of the MARY KAY mark with the USPTO (e.g., Reg. No. 817,516 issued October 25, 1966).  The Panel finds that this evidence is sufficient to establish rights in the MARY KAY mark under Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

The <marykayforless.com> and <marykaycosmetic.com> domain names contain Complainant’s MARY KAY mark in its entirety, delete the space within the mark, and add the generic top-level domain (“gTLD”) “.com.”  In addition, these disputed domain names add either the descriptive term “cosmetic,” which describes Complainant’s business, or the generic phrase “for less.”  The Panel finds that none of these alterations to Complainant’s mark sufficiently distinguish these disputed domain names from Complainant’s mark.  Therefore, the Panel finds that the <marykayforless.com> and <marykaycosmetic.com> domain names are confusingly similar to Complainant’s MARY KAY mark under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also 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.”).

 

The <mary-kay-cosmetics.com> domain name contains Complainant’s entire MARY KAY mark and replaces the space in the mark with a hyphen.  In addition, this disputed domain name adds a second hyphen and the descriptive term “cosmetic,” which describes Complainant’s business.  Finally, this disputed domain name adds the gTLD “.com.”  The Panel finds that none of these alterations to Complainant’s mark sufficiently distinguishes this disputed domain name from Complainant’s mark.  Therefore, the Panel finds that the <mary-kay-cosmetics.com> domain name is confusingly similar to Complainant’s MARY KAY mark under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc., supra; see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Chanel, Inc., supra; see also Jerry Damson, Inc., supra.

 

The <mymaryk.com> domain name contains a significant portion of Complainant’s MARY KAY mark, deleting the “ay” portion of Complainant’s mark, thus, leaving the portion of the mark that is phonetically similar to Complainant’s mark.  In addition, this disputed domain name adds the generic term “my” and the gTLD “.com.”  The Panel finds that the <mymaryk.com> domain name is confusingly similar to Complainant’s MARY KAY mark under Policy ¶ 4(a)(i) because none of these alterations to Complainant’s mark sufficiently distinguishes the <mymaryk.com> domain name from Complainant’s MARY KAY mark.  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark);  see also Colibri Corp. v. Dinoia, FA 662937 (Nat. Arb. Forum May 5, 2006) (finding that the <calibri.com> domain name was visually and phonetically similar to the complainant’s COLIBRI mark); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Jerry Damson, Inc., supra.

 

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

 

Rights or Legitimate Interests

 

Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names.  Once Complainant makes this showing, the burden then shifts to Respondent and Respondent must 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).  The burden now shifts to Respondent, from whom no response was received.  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 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).”).  Although Respondent has not alleged that it has rights or legitimate interests in the disputed domain names, the Panel elects to examine the record under Policy ¶ 4(c).

 

Respondent is listed in the WHOIS information as “Bunie.com” for the <mary-kay-cosmetics.com>, <marykayforless.com>, <marykaycosmetic.com>, and <mymaryk.com> domain names, which does not indicate that Respondent is commonly known by any of the disputed domain names.  Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case.  Moreover, Complainant alleges that it has not licensed or otherwise authorized Respondent to use the MARY KAY mark.  Therefore, the Panel finds 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

The <mary-kay-cosmetics.com>, <marykayforless.com>, and <marykaycosmetic.com>, domain names resolve to an unrelated commercial website at <terapeak.com>.  The Panel finds that Respondent’s use of these confusingly similar disputed domain names for commercial purposes is not 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).  See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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)).

 

Respondent’s <mymaryk.com> domain name does not resolve to any website.  The Panel finds that Respondent’s failure to make an active use of this disputed domain name is not 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).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).

 

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

 

Registration and Use in Bad Faith

 

Respondent registered the <marykayforless.com> domain name on February 6, 2000. Respondent registered the <marykaycosmetic.com> domain name on February 29, 2000 and registered the <mary-kay-cosmetics.com> on April 23, 2000.  Since Respondent registered these disputed domain names, all have resolved to the same unrelated commercial website at <terapeak.com>.  The Panel finds that Respondent’s use of these disputed domain names creates a likelihood of confusion as to Complainant’s affiliation with these disputed domain names.  The Panel further finds that Respondent is commercially gaining from this likelihood of confusion by redirecting Internet users to this unrelated commercial website, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks.  Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that a finding of bad faith under Policy ¶ 4(a)(iii) is not limited to those instances enumerated in Policy ¶ 4(b).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

In addition, Respondent is not making an active use of the <mymaryk.com> domain name because this disputed domain name does not resolve to any website.  The Panel finds that Respondent’s failure to actively use this disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).

 

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

 

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 <mary-kay-cosmetics.com>, <marykayforless.com>, <marykaycosmetic.com>, and <mymaryk.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  January 6, 2010

 

 

 

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