Mary Kay Inc. v. Novacek Martin
Claim Number: FA1004001317058
Complainant is Mary Kay Inc. (“Complainant”), represented by John
D. Wiseman, of Mary Kay Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mayrkayintouch.com> and <marykayintoucn.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2010.
On April 5, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <mayrkayintouch.com> and <marykayintoucn.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 April 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mayrkayintouch.com and postmaster@marykayintoucn.com by e-mail. Also on April 13, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <mayrkayintouch.com> and <marykayintoucn.com>domain names are confusingly similar to Complainant’s MARY KAY INTOUCH mark.
2. Respondent does not have any rights or legitimate interests in the <mayrkayintouch.com> and <marykayintoucn.com>domain names.
3. Respondent registered and used the <mayrkayintouch.com> and <marykayintoucn.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mary Kay, Inc., is an international marketer and producer of body care products and cosmetics. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MARY KAY INTOUCH mark (e.g., Reg. No. 2,122,018 issued on December 16, 1997).
Respondent, Novacek Martin, registered the <mayrkayintouch.com> on August 21, 2009 and the <marykayintoucn.com> domain name on September 26, 2009. Respondent’s disputed domain names resolve to websites that display various third-party links to both businesses in competition with Complainant and unrelated to Complainant.
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
its MARY KAY INTOUCH mark pursuant to Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO (e.g., Reg. No. 2,122,018 issued December 16,
1997). 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 Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb.
Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has
registered its trademark in the country of the respondent’s residence).
Complainant argues that the <mayrkayintouch.com> and <marykayintoucn.com> domain
names are confusingly similar to its MARY KAY INTOUCH mark because both
disputed domain names contain a misspelling of Complainant’s mark. Complainant
contends that transposing the letters “r” and “y” of the “mary” portion of its
mark, or using the letter “n” in place of the letter “h” in the “touch” portion
of its mark, along with the addition of the generic top-level domain (“gTLD”)
“.com” is not sufficient to adequately distinguish the disputed domain names
from Complainant’s mark. The Panel
agrees and finds that, pursuant to Policy ¶ 4(a)(i), Respondent’s disputed
domain names are confusingly similar to Complainant’s mark. See Google Inc. v. Jon G., FA 106084
(Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to the complainant’s GOOGLE mark
and noting that “[t]he transposition of two letters does not create a distinct
mark capable of overcoming a claim of confusing similarity, as the result
reflects a very probable typographical error”); see also Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop.
Assocs., FA 937650 (Nat.
Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms
and the addition of a gTLD do not establish distinctiveness from the
complainant’s mark under Policy ¶ 4(a)(i)); see
also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <mayrkayintouch.com> and <marykayintoucn.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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)). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel will, however, examine the evidence on record to determine whether Respondent may have rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain names identifies the domain name registrant as “Novacek Martin” and the Panel finds no further evidence on record showing that Respondent is commonly known by the disputed domain names. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant also contends that Respondent is not using the
disputed domain names in connection with a bona
fide offering of goods or services, nor is Respondent making a noncommercial
or fair use of the disputed domain names.
Complainant submits evidence that Respondent is using the disputed
domain names to resolve to a website that offers click-through links and
advertisements for Complainant’s competitors in the skin care and cosmetic
industry as well as businesses unrelated to Complainant for financial
gain. The Panel finds that Respondent’s
use of the disputed names to redirect Internet users to Complainant’s
competitors, presumably for financial gain, does not constitute 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 names pursuant to Policy ¶ 4(c)(iii). See Coryn Group,
Inc. v. Media Insight, FA 198959 (Nat.
Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks);
see also Jerry
Damson, Inc. v.
The Panel further finds that Respondent is taking advantage
of Internet users attempting to reach Complainant’s official
<marykay.com> and <marykayintouch.com> websites by using common
misspellings of Complainant’s MARY KAY INTOUCH mark. The Panel finds that Respondent has engaged
in typosquatting through its registration of the <mayrkayintouch.com> and <marykayintoucn.com>
domain names, which is further evidence that Respondent lacks rights
or legitimate interests in the disputed domain names under Policy ¶
4(a)(ii). See Microsoft
Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant argues that Respondent’s use of the <mayrkayintouch.com> and <marykayintoucn.com>
domain names to divert Internet users to competing skin care and cosmetic
websites, presumably for commercial
gain, disrupts Complainant’s business and is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).
The Panel finds that Respondent registered and is using the disputed
domain names in bad faith under Policy ¶ 4(b)(iii),
because Respondent is intentionally diverting Internet users seeking
Complainant’s website to the websites of its competitors. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Complainant further alleges that Respondent’s use of the disputed domain names to intentionally attract Internet users for commercial gain is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s disputed domain names create a likelihood of confusion between the disputed domain names and Complainant’s MARY KAY INTOUCH mark, and that Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites in competition with Complainant’s body care and cosmetic goods that are displayed on Respondent’s website. The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain through Respondent’s registration of the <mayrkayintouch.com> and <marykayintoucn.com> domain names, and that this use is further evidence of bad faith and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel has already determined that Respondent has engaged
in typosquatting through its registration and use of the <mayrkayintouch.com> and <marykayintoucn.com>
domain names. This practice
has been found to constitute evidence by itself of bad faith registration and
use under Policy ¶ 4(a)(iii), and this Panel finds
accordingly. See 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); see also Microsoft Corp. v. Domain Registration
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 <mayrkayintouch.com> and <marykayintoucn.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 13, 2010
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