NYX, Los Angeles Inc. v. Charles Shoopak
Claim Number: FA1303001491334
Complainant is NYX, Los Angeles Inc. (“Complainant”), represented by Patchen M. Haggerty of Dorsey & Whitney LLP, Washington, USA. Respondent is Charles Shoopak (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nyx10.com>, 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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2013; the National Arbitration Forum received payment on March 25, 2013.
On March 25, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nyx10.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@nyx10.com. Also on March 26, 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 April 15, 2013.
The Complainant submitted an Additional Submission, which was determined to be compliant on April 22, 2013 which was timely.
The Respondent submitted an Additional Submission on April 26, 2013 which was also timely.
On April 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 name <nyx.com> (hereinafter referred to as “disputed domain name)” be transferred from Respondent to Complainant.
i) The disputed domain name is confusingly similar to trademarks in which the Complainant has rights;
Complainant’s NYX trademark and stylized logo are identified solely with Complainant. The trademark and logo were first used in connection with its cosmetic products in 1999 and have been used continuously since that time. Complainant’s NYX mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,310,409 registered October 16, 2007) (hereinafter referred to as “Complainant’s mark). Complainant currently uses its mark to designate its cosmetic product line, which includes liquid makeup, compact powder, loose powder, powder cream, blush, eyebrow pencils and powder, eye shadow, liquid eye liner, mascara, eye shadow pencil, gel, and liner, lipstick, body bronzer, powder, nail polish, and a variety of other cosmetics and personal care products and accessories. The <nyx10.com> domain name (hereinafter referred to as “disputed domain name”) is confusingly similar to Complainant’s mark in that the disputed domain name contains the Complainant’s mark in its entirety, with the addition of the number 10 and the generic top-level domain (“gTLD”) “.com.”
ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
Respondent is not commonly known by the disputed domain name. Respondent is not a licensee or subsidiary of Complainant. Respondent has never been authorized to use Complainant’s mark, nor has Complainant authorized or licensed Respondent to supply or distribute Complainant’s goods or services. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Respondent has never performed any business activities under such a name. As such, Respondent has no rights or legitimate interests in respect of the disputed domain name
iii) The disputed domain name was registered and is being used in bad faith
Respondent registered the disputed domain name and uses it to host a website that creates a flow of revenue to Respondent through a parked website that displays links to third party websites, many of which are operated by Complainant’s competitors. The disputed domain name is confusingly similar to Complainant’s mark. Respondent registered and uses the disputed domain name in bad faith, as it had actual knowledge and constructive knowledge of Complainant’s mark and makes a profit by advertising competitors’ hyperlinks at the resolving website.
i) The disputed domain name is not confusingly similar to Complainant’s mark
Respondent denies any likelihood of confusion between the disputed domain name and Complainant’s mark, especially because of the term “cosmetics” in the Complainant’s mark and/or domain name, which is in actual use, and the number “10” in the disputed domain name.
ii) The Respondent has rights or legitimate interests in respect of the disputed domain name;
Respondent asserts that it plans to use the disputed domain name to provide daily commentary on 10 news articles. Respondent holds domain registrations for other similar domain names, as well as the disputed domain name; claims that it has plans to connect its websites; and asserts that each of its domain names has meaning. Respondent has made plans to use the disputed domain name. As such, the Respondent has rights or legitimate interests in respect of the disputed domain name.
iii) The disputed domain name was not registered and is not being used in bad faith
Respondent was unaware of the actual content posted to the disputed domain name and holds the registrar, GoDaddy.com, accountable for any of the content appearing at the resolving website. Respondent has done extensive research to ensure it has not infringed on the disputed domain name website.
Respondent admits that the website is parked but casts the blame upon the registrar, claiming GoDaddy.com should be the subject of the Complaint. Respondent denies any effort to create confusion with regard to the content found on the resolving website. Respondent further contends that Complainant brought the Complaint negligently, due to its short notice in alleging Respondent registered and uses the disputed domain name improperly and because Complainant failed to allege that the Respondent was the proper party in its claim of bad faith registration and use.
Respondent registered the disputed domain name on January 2, 2013.
C. Additional Submissions
i) Complainant’s contentions in its additional submission
Respondent argues that “the disputed domain name is in no way confused with the Complainant’s mark “nyx cosmetics”. Respondent’s claim that the disputed domain name cannot be confused with Complainant’s mark because Complainant does not include any numeric digits in its mark is irrelevant, as the Policy “considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.” The addition of a non-distinctive number to Complainant’s mark does not distinguish the disputed domain name in such a way as to alleviate confusing similarity.
Complainant gave Respondent no rights to use the Complainant’s mark in a domain name, and Respondent is charged with demonstrating that it made preparations to offer services at the disputed domain name, which it has failed to do. Respondent merely makes a lofty claim of “exploiting the connection between the New York Times and the symbol for multiplication ‘x’ often expressed as ‘times.’” Respondent does not present any concrete evidence to show actual preparations to offer services at the disputed domain name, which undermines any claims of rights or interests in the disputed domain. Respondent admits that the disputed domain name is parked, which indicates that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent states that Complainant sent only one e-mail with regard to Respondent’s use of the domain name prior to commencing the present action, which is false, as Complainant sent a letter to the e-mail address listed in the WHOIS information and sent a hard copy through Federal Express to the physical address listed in the WHOIS information. Federal Express was unable to locate Respondent, and the letter was returned to Complainant as undeliverable. Following the attempted delivery, Complainant waited for over thirty days before filing a Complaint.
ii) Respondent’s contentions in its additional submission
The fact that the mark “nyxcosmetics” does not use anything like <nyx1.com> or <nyx100.com> is relevant to the argument the disputed domain name cannot be confused with the mark “nyxcosmetics”.
There are 13 active registered marks for the symbol “NYX” and another mark “3nyx” being used as a domain name <3nyx.com>. This fact also supports the dissimilarity between the Complainant’s mark and the disputed domain name.
The Complainant’s citing case Am. Online, Inc. v. garybush co uk, FA 360612 (NAF December 22, 2004) is not applicable to this case in that i) the number “0” was placed in front of the very short and very well known mark, ii) the absence of the word “cosmetics” and the addition of a trailing “10.” More similar domain names such as <nyxcosmetics.com>, <nyx.com>, <3nyx.com>, etc. to the Complainant’s mark co-exist. Though lexically closer to the Complainant’s domain, still the domain names are evidently not being confused with the mark.
Respondent possesses unimpeachable evidence of his continued rights and legitimate interest in developing the disputed domain name. One of the biggest single expenses incurred so far has been a continued subscription to Times which Respondent finds vital to his business preparation for utilizing newspaper articles.
The parked page at the disputed domain name that contained a cosmetic-related link, as cited to in the original Complaint, was due entirely to GoDaddy’s actions. The hard copy of the Complainant’s letter asking Respondent’s taking down the parked web page was never delivered to Respondent. There was nothing questionable about the parking page. There was never any bad faith, as Respondent did not post the content, did not control the contents, and there was no incentive for Respondent to leave it up, as Respondent gained nothing as a result of the content at the parked webpage.
The Panel finds that the Complainant’s mark was first used in connection with its cosmetics in 1999 and has been used since that time. Complainant’s mark is registered with the USPTO (Reg. No. 3,310,409 registered on October 16, 2007). Complainant currently uses its mark to designate its cosmetic product line and a variety of other cosmetics and personal care products and accessories.
Respondent registered the disputed domain name on January 2, 2013.
The disputed domain name resolved to a parking page.
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 owns the rights to Complainant’s mark as a result of its federal trademark registrations with the USPTO (e.g., Reg. No. 3,310,409 registered October 16, 2007). The panel in AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), stated that the complainant had submitted evidence of its USPTO registration, which satisfies the Policy as to establishing the complainant’s rights in its mark. The Panel finds that Complainant’s evidence of its trademark registration with the USPTO serves to demonstrate its rights in the Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark and states that the disputed domain name includes Complainant’s mark in its entirety, with the addition of the number “10” and the gTLD “.com.”
Respondent alleges that the disputed domain name is not confusingly similar to Complainant’s “nyxcosmetics” mark, arguing that Complainant’s mark does not include any numeric digits and that the disputed domain name cannot be accidentally typed while seeking Complainant’s website. Respondent argues that the disputed domain name does not confuse consumers by including, for instance, a descriptive term such as “cosmetics,” relating to Complainant’s business, and therefore it cannot be seen as confusingly similar.
However, as the Policy “considers only whether Complainant has rights in the mark and whether the disputed Domain Name is identical or confusingly similar to Complainant’s mark “NYX” per se not “NYX Cosmetics,” and thus confusing similarity must be determined between the Complainant’s mark “NYX” and the disputed domain name <nyx10.com> not between the mark and/or domain names comprising of “NYX Cosmetics”.
The Panel finds the disputed domain name being confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) due to the only changes in the disputed domain name being the numeric digit “10” and the gTLD. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady (WIPO Case No. D2000-0429 June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that the disputed domain name <nyx10.com> is confusingly similar to the Complainant’s mark “NYX” irrespective of whether the digit “10” is considered being a descriptive term in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, D2010-0240 (WIPO March 31, 2010), finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark.”
The Respondent alleges that there are a good number of co-existing cases, wherein marks and/or domain names are more confused with the Complainant’s mark than between the disputed domain name and the Complainant’s mark in this case. However, such examples should not influence finding confusing similarity between the disputed domain name and the Complainant’s mark simply because they co-exist. The factual circumstances of such co-existence of marks and or domain names may be different from those of this case in terms of similarity of goods concerned, jurisdictions, the contents of the resolving websites, consent to use, etc. Even if the circumstances of those cases were similar to those of this case, they would be matters to be resolved by the relevant parties. As such, the cases cited by the Respondent cannot preclude confusing similarity between the disputed domain name and the Complainant’s mark.
The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s mark and the disputed domain name as well.
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
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 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 claims that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent is not a licensee or subsidiary of Complainant and has not been authorized or licensed to use Complainant’s mark or distribute Complainant’s products. Complainant also argues in its Additional Submission that it had not granted Respondent permission to use the Complainant’s mark in a domain name. Complainant submits evidence demonstrating that “Charles Shoopak” is the registrant of the disputed domain name, according to the WHOIS information. The panel in Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), held that the WHOIS information was such that one could infer that the respondent, Onlyne Corporate Services11, was not commonly known by the name “welsfargo” in any way. Further, the panel in Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000), stated that the respondent was not a licensee of the complainant and not commonly known by the domain name in question, therefore the respondent lacked rights or legitimate interests in the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), as shown by the WHOIS information as well as its lack of permission from Complainant to use the Complainant’s mark in a domain name.
Complainant alleges in its Additional Submission that Respondent fails to show demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, arguing that any evidence Respondent provides fails to demonstrate actual preparations to use the disputed domain name. In Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007), the panel stated that the respondent lacked rights or legitimate interests in the confusingly similar domain name, since it had not made demonstrable preparations to use the resolving website since its registration several months prior to the complaint’s filing.
Respondent argues that it holds the domain names <nyx20.com> and <nytimes10.com>, in addition to the disputed domain name. Respondent alleges that it uses the letter “x” to mean “times,” as the letter is used in multiplication to mean “times.” Respondent claims that the numbers that follow “nyx” or “nytimes” in the domain names represent “the number of articles the times allowed visitors to see,” which was cut to 10, indicating the importance of the number 10 in the disputed domain name. Respondent further alleges that it has “carefully laid business plans and preparations,” in regard to the disputed domain name, including e-mails with regard to its other domain names with writers. Respondent seems to assert that it intends to use the disputed domain name to provide daily commentary on 10 news articles.
However, the Panel finds that the demonstration of the preparation for a business as alleged by the Respondent above is insufficient to recognize the Respondent’s rights or legitimate interests in the disputed domain name especially in that the Respondent’s arguments are not well supported by evidence. The Panel finds that Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and ¶ 4(c)(ii) is supported by the fact that Respondent does not demonstrate substantial and actual preparations to make use of the disputed domain name since the time of the disputed domain’s registration.
Respondent asserts in its additional submission that one of the biggest single expenses incurred so far has been a continued subscription to Times which Respondent finds vital to his business preparation for utilizing newspaper articles. However, the Panel finds that a continued subscription to Times cannot be recognized as a demonstration of actual preparations to use the disputed domain name.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and ¶ 4(c)(ii).
Complainant sets forth the allegation that Respondent uses the Complainant’s mark without authorization from Complainant, which creates a “false impression that the links and information provided on Respondent’s website are sponsored or endorsed by Complainant.” Complainant contends that Respondent uses the disputed domain name to host a pay-per-click website that creates revenue through Internet advertising and argues that profit was Respondent’s primary motivation in registering the disputed domain name. Complainant claims that Respondent “rides freely on the goodwill associated with Complainant’s mark,” which demonstrates bad faith registration and use.
The Panel recognizes that Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv) is shown by its use of the disputed domain name to host a website that includes hyperlinks to Complainant’s competitors, in an effort to confuse and attract Internet consumers, in order to make a commercial profit. 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).”).
Complainant argues that the Complainant’s mark creates exclusive rights specific to Complainant, and the mark has achieved such fame and notoriety that it is “inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant’s rights in the mark.”
The Panel finds that the hyperlinks to Complainant’s competitors at the resolving website demonstrate that Respondent had actual knowledge of Complainant’s mark, indicating bad faith registration under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
In addition, Respondent argues to the effect that the Complaint’s cease-and-desist letter was not delivered to the Respondent. However, such a an argument is not acceptable, in that the Complainant’s cease-and-desist letter was sent to the Respondent also by way of e-mail as indicated in WHOIS records of the disputed domain name which has also been used for the communication of the subject domain name dispute case. Furthermore, such a cease-and-desist letter is not necessarily required to establish a bad faith use of a domain name or to file a Complaint under the UDRP.
Respondent claims in its Policy ¶ 4(a)(ii) argument that it did not aim to create confusion in its use of the disputed domain name and that it has plans to use it in the context of providing articles and commentary for subscribing readers. Respondent states briefly in response to Complainant’s allegations of Respondent’s bad faith registration and use that “it is only Godaddy’s computer that’s creating some havoc” and contends in its Policy ¶ 4(a)(ii) section that the disputed domain’s registrar is responsible for the content found at the disputed domain name.
However, the responsibilities on the contents of the website to which the disputed domain name is resolved are on the domain name registrant, not on the Registrar or a third party. As such, the Respondent cannot be excused by simply stating that he was not aware of the contents of the website to which the disputed domain name was resolved.
Therefore, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyx10.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: May 9, 2013
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