NYX, Los Angeles Inc. v. AppServDomain.com
Claim Number: FA1301001478206
Complainant is NYX, Los Angeles Inc. (“Complainant”), represented by Patchen M. Haggerty of Dorsey & Whitney LLP, Washington, USA. Respondent is AppServDomain.com (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nyxlipshop.com>, registered with PDR Ltd. d/b/a Publicdomainregistry.Com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 31, 2012; the National Arbitration Forum received payment January 2, 2013.
On January 2, 2013, PDR Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <nyxlipshop.com> domain name is registered with PDR Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the PDR Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2013, 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@nyxlipshop.com. Also on January 10, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
i. Respondent is not commonly known by the <nyxlipshop.com> domain name.
ii. Respondent is using the disputed domain name to offer a competitive online retail store in the same manner as Complainant and is using Complainant’s registered mark.
i. Respondent registered the disputed domain name to intentionally attract Internet users by creating a likelihood of confusion with Complainant’s NYX mark for Respondent’s own commercial gain.
ii. It is inconceivable that Respondent could have registered the <nyxlipshop.com> domain name without actual knowledge of Complainant’s rights in the mark due to the fame and notoriety of the mark and Respondent’s use of the mark and log on the resolving website.
Complainant established rights in a mark contained in its entirety within the disputed domain name that Respondent registered.
The disputed domain name is confusingly similar to Complainant’s mark.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered and used the disputed domain name 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."
Paragraph 4(a) of the Policy requires Complainant to 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 to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar:
Complainant, NYX, Los Angeles Inc., contends that it is in the business of selling cosmetics and clothing. Complainant argues and shows that it is the owner of trademark registrations with the USPTO for the NYX mark (e.g., Reg. No. 3,310,409, registered October 16, 2007). See Complainant’s Exhibit D and E. Complainant also owns and provides evidence that it is the owner of trademark registrations with Thailand’s DIP for the NYX mark (Reg. No. Kor229992, registered February 15, 2005). See Complainant’s Exhibit F. Therefore, the Panel finds that Complainant’s registration with the USPTO and Thailand’s DIP is sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <nyxlipshop.com> domain name is confusingly similar to Complainant’s NYX mark as it contains Complainant’s NYX mark in its entirety with the addition of the generic wording “lip shop.” Complainant argues that the addition of the wording “lip shop” implies that the domain name is an official NYX domain name leading to an official NYX website in the nature of a retail outlet, neither of which is true. The Panel finds that the addition of a generic term to a complainant’s mark in a disputed domain name does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant asserts that Respondent adds the gTLD “.com” to the domain name. The Panel finds that the addition of a gTLD does not distinguish a disputed name from the initial mark infringed upon in a Policy ¶ 4(a)(i) analysis. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Accordingly, the Panel finds that Respondent’s <nyxlipshop.com> domain name is confusingly similar to Complainant’s NYX mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <nyxlipshop.com> domain name. Complainant asserts that Respondent is not a licensee or subsidiary of Complainant. Complainant argues that Respondent has never been authorized to use Complainant’s NYX mark and that Complainant has not authorized or licensed Respondent to supply or distribute Complainant’s goods or services. The Panel notes that the WHOIS record identifies “AppServDomain.com” as the registrant of the disputed domain name. See Complainant’s Exhibit A. The Panel also notes that Respondent has not provided further evidence that it is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is using the disputed domain name to offer a competitive online retail store in the same manner as Complainant and is using Complainant’s registered mark. See Complainant’s Exhibit G. Complainant asserts that Respondent is attempting to capitalize on using Complainant’s mark as its domain name, presumably to gain revenue from Internet users searching for Complainant’s <nyxcosmetics.com> site. The Panel finds that Respondent’s use of the disputed domain name to offer competing goods for sale is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent registered the disputed domain name to intentionally attract Internet users by creating a likelihood of confusion with Complainant’s NYX mark for its own commercial gain. The Panel notes that Respondent is using the disputed domain name to offer a competitive online retail store in the same manner as Complainant. See Complainant’s Exhibit G. Complainant argues that Respondent is using Complainant’s NYX mark and the logo that resembles Complainant’s in order to benefit commercially from Complainant’s well-established goodwill. The Panel finds that Respondent’s use of the disputed domain name to attract Internet users for its own commercial gain supports findings of bad faith use and registration under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant argues that Respondent could not have registered the <nyxlipshop.com> domain name without actual knowledge of Complainant’s rights in the mark. Complainant asserts that Respondent’s actual knowledge of Complainant’s rights in the mark is evidenced by the fame and notoriety of Complainant’s NYX mark and Respondent’s use of Complainant’s logo on its website. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that Respondent had actual knowledge of Complainant's mark and rights here based on the fame of Complainant’s mark and Respondent’s use of Complainant’s logo; therefore Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyxlipshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 18, 2013
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