NYX, Los Angeles Inc. v. Neftali Mercedes
Claim Number: FA1301001478214
Complainant is NYX, Los Angeles Inc. (“Complainant”), represented by Patchen M. Haggerty of Dorsey & Whitney LLP, Washington, USA. Respondent is Neftali Mercedes (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nyxclique.com>, <nyxclique.net>, and <nyxclique.org>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2012; the National Arbitration Forum received payment on January 2, 2013.
On January 3, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has 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 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 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@nyxclique.com, postmaster@nyxclique.net, postmaster@nyxclique.org. Also on January 7, 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.
A timely Response was received and determined to be complete on January 28, 2013.
Complainant submitted a timely Additional Submission that was received on January 31, 2013.
All submissions were considered by the Panel.
On January 31, 2013, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Complainant has used the NYX mark in commerce in connection with cosmetics since as early as 1999.
2. Complainant owns rights in the NYX mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,310,409 registered Oct. 16, 2007).
3. Respondent’s <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names are confusingly similar to Complainant’s NYX mark.
4. Respondent’s <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names contain Complainant’s NYX mark in its entirety with the addition of the word “clique” and the generic top-level domains (“gTLD”) “.com,” “.net,” or “.org.”
5. Respondent has no rights or legitimate interests in the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names.
6. Respondent’s WHOIS record indicates that Respondent is not commonly known by the disputed domain names.
7. Complainant has never licensed or authorized Respondent to use its NYX mark in any way.
8. Respondent’s <nyxclique.com> domain name resolves to a parked page featuring the heading, “Future home of something quite cool.”
9. Respondent’s <nyxclique.net> and <nyxclique.org> domain names resolve to parked pages featuring links to third parties, some of which compete with Complainant.
10. Respondent is presumably gaining revenue from Internet users that click on the links present on the pages resolving from the <nyxclique.net> and <nyxclique.org> domain names.
11. Respondent registered and is using the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names in bad faith.
12. Respondent’s use of the disputed domain names gives a false impression that the links and information present on Respondent’s webpages resolving from the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names are sponsored or endorsed by Complainant.
13. Respondent is failing to make an active use of the <nyxclique.com> domain name.
1. The word Nyx relates to the ancient Greek goddess of the night.
2. NYX is also used as the ticker symbol for the New York Stock Exchange and alludes to a geographic connection.
3. Respondent never intends to sell cosmetics.
4. Respondent had no previous knowledge of Complainant’s company or their brand of cosmetics.
5. Respondent uses “nyxclique” to, “represent a close knit group of beautiful women of the night who aid men in their search for companionship.”
6. Respondent is working on a “wing woman” service under the name Nyxclique that men will use to aid them in successfully connecting with other women on a social level.
1. Respondent’s arguments about other uses and meanings of NYX is not relevant on the issue of whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to complainant’s mark.
2. The lack of evidence of demonstrable preparations by Respondent to offer services using the disputed domain names before she had notice of the complaint is sufficient to defeat any claims of rights or interests in the names.
3. Respondent’s proposed use of domain names that are confusingly similar to Complainant’s registered trademark with a site that will offer escort services and display pornographic photographs, writings and videos would tarnish Complainant’s trademark and evidences Respondent’s bad faith.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 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 claims that it has rights in the NYX mark pursuant to Policy ¶ 4(a)(i). Complainant presents the Panel with evidence of its registrations with the USPTO for its NYX mark (e.g., Reg. No. 3,310,409 registered Oct. 16, 2007). Previous panels have found that evidence of a registration with a national trademark authority is evidence of rights in a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel finds that Complainant has rights in the NYX mark pursuant to Policy ¶ 4(a)(i) through its registrations with the USPTO.
Complainant claims that Respondent’s <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names are confusingly similar to Complainant’s NYX mark. Complainant argues that all of Respondent’s disputed domain names contain Complainant’s NYX mark in its entirety with the addition of the generic word “clique.” Complainant further claims that Respondent’s disputed domain names contain the gTLDs “.com,” “.net,” or “.org.” Previous panels have found that the addition of a generic term and a gTLD is insufficient to distinguish a disputed domain name from a given mark. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Therefore, the Panel finds that Respondent’s <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names are confusingly similar to Complainant’s NYX mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 has no right or legitimate interests in the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names because it is not commonly known by them. Complainant claims it has not licensed or authorized Respondent to use its NYX mark in any way. Complainant also points out that the WHOIS information for Respondent’s disputed domain names lists “Neftali Mercedes” as registrant. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence of relation in the materials presented including in the WHOIS information. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent is not commonly known by any of the <nyxclique.com>, <nyxclique.net>, or <nyxclique.org> domain names.
Complainant argues that Respondent has no rights or legitimate interests in the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent’s <nyxclique.net>, and <nyxclique.org> domain names resolve to parked pages displaying pay-per-click links to third parties, some of which compete with Complainant. The Panel notes that some of the featured links resolving from the <nyxclique.net> domain name include; “BH Cosmetics Palettes,” “NYX Cosmetics,” “Sephora Official Site,” and “Beauty Cosmetics.” The Panel notes that some of the featured links resolving from the <nyxclique.org> domain name include: “Beauty Cosmetics,” “Lengthen Your Lashes,” and “NYX Cosmetics.” Previous panels have routinely found that pay-per-click links featured on websites that generate revenue for a respondent and compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
Complainant further argues that Respondent is using the <nyxclique.com> domain name to resolve to a parked web page featuring the heading, “Future home of something quite cool.” Previous panels have found that a respondent’s failure to make an active use of a disputed domain name indicates that a respondent lacks rights and legitimate interests in the disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights or legitimate interests in the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names because it is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent is using Complainant’s NYX mark to attract Internet users and create a false impression regarding the links present on the websites resolving from Respondent’s <nyxclique.net> and <nyxclique.org> domain names, thereby causing confusion for customers. Complainant also contends that Respondent is using the <nyxclique.net> and <nyxclique.org> domain names to resolve to parked websites featuring pay-per-click links from which Respondent derives revenue. Previous panels have found bad faith when a respondent registers a confusingly similar domain name and provides links to competing businesses in the same industry in order to commercially benefit from the misleading domain names. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Based on Complainant’s contentions and previous panel decisions, the Panel finds that Respondent registered and is using the <nyxclique.net> and <nyxclique.org> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Further, the Panel finds that it is not bound in its analysis under Policy ¶ 4(a)(iii) to the enumerated factors of Policy ¶ 4(b), but that the Panel looks to the totality of the circumstances. See 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.”).
Complainant also argues that Respondent’s <nyxclique.com> domain name is a parked page lacking any substantive content. Previous panels have also found that failing to make an active use of a confusingly similar domain name constitutes bad faith registration and use. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Complainant also contends that in light of the fame and notoriety of Complainant's NYX mark, it is inconceivable that Respondent could have registered the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant further asserts that it has exclusive rights in the NYX mark and has never consented to Respondent’s registration of the disputed domain names. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <nyxclique.com>, <nyxclique.net>, and <nyxclique.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 7, 2013
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