NYX, Los Angeles Inc. v. Wattanapon Kumniansil
Claim Number: FA1308001515338
Complainant is NYX, Los Angeles, Inc. (“Complainant”), represented by Patchen M. Haggerty of Dorsey & Whitney LLP, Washington, USA. Respondent is Wattanapon Kumniansil (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nyxthailand.com>, registered with ONLINENIC, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2013; the National Arbitration Forum received payment on August 19, 2013.
On August 25, 2013, ONLINENIC, INC. confirmed by e-mail to the National Arbitration Forum that the <nyxthailand.com> domain name is registered with ONLINENIC, INC. and that Respondent is the current registrant of the name. ONLINENIC, INC. has verified that Respondent is bound by the ONLINENIC, INC. 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 August 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@nyxthailand.com. Also on August 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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. 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.
A. Complainant
Complainant contends as follows:
Complainant first used the NYX mark in commerce as early as 1999. Complainant has rights in the NYX mark pursuant to Policy ¶ 4(a)(i). Complainant owns registrations of the NYX and design mark with the United States Patent and Trademark Office (“USPTO”) as well as with Thailand’s Department of Intellectual Property (“DIP”).
Complainant’s rights in the NYX mark predate the registration of the <nyxthailand.com> domain name.
Respondent merely adds the geographic locator “Thailand” and the generic top-level domain “.com” to form the at-issue domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <nyxthailand.com> domain name. Respondent is not a licensee, subsidiary, distributor or authorized retailer of Complainant or its products. Complainant has never authorized Respondent to use its mark. Respondent is using the disputed domain name to offer an online retail store using Complainant’s NYX mark. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <nyxthailand.com> domain name.
Respondent registered and is using the <nyxthailand.com> domain name in bad faith. Respondent is using the disputed domain name to offer an online retail store using Complainant’s NYX mark. Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s NYX mark as to the source, sponsorship, affiliation, or endorsement of Respondent with Complainant in an attempt to capitalize unfairly on the goodwill of Complainant’s mark. Respondent is holding itself out as an authorized retailer of Complainant’s products in Thailand, when it is not authorized.
Respondent had actual knowledge of complainant’s rights in the NYX mark when it registered the <nyxthailand.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO and DIP registered trademarks for NYX.
Respondent is not affiliated with Complainant and is not authorized to use the NYX mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in NYX.
Respondent uses the <nyxthailand.com> domain name to address an online retail store displaying Complainant’s NYX design mark and offering goods similar to Complainant’s for sale.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has trademark registrations with the USPTO in the United States as well as with the DIP in Thailand. Either of such registrations is sufficient to demonstrate Complainant’s rights in a mark for the purpose of the Policy. See NYX, Los Angeles Inc. v. AppServDomain.com, FA 1478206 (Nat. Arb. Forum Feb.18, 2013) (finding that registration of the NYX mark with Thailand’s DIP as well as with the USPTO establishes rights in the mark pursuant to Policy ¶ 4(a)(i).)
The <nyxthailand.com> domain name features Complainant’s NYX mark with the addition of the geographic locator “Thailand” and the gTLD “.com.” The differences between the Complainant’s mark and Respondent’s domain name are insufficient to distinguish the at-issue domain name from Complainant’s NYX trademark for purposes of the Policy. Therefore, the Panel concludes that the <nyxthailand.com> domain name is confusingly similar to Complainant’s trademark under Policy ¶4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Wattanapon Kumniansil” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Respondent is using the at-issue domain name to offer an online retail store that uses Complainant’s NYX mark to capitalize Complainant’s goodwill. Indeed, the website is titled “NYX, NYX Thailand Online Shopping Cosmetic” and prominently displays NYX’s stylized mark. Respondent’s ultimate interest is to generate revenue from Internet users searching for Complainant’s legitimate business but instead, because of the confusion between Complainant’s trademark and Respondent’s confusingly similar domain name, winding up on Respondent’s website. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ (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.”)
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances, as well as other circumstance, are present which urge the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent uses the at-issue domain name to address a website which displays Complainant’s stylized mark and offers cosmetic products for sale without any authority to do so. Respondent’s scheme is to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s NYX mark as to the source, sponsorship, affiliation, or endorsement of Respondent with Complainant. By pretending to be an affiliate of Complainant in this manner, Respondent intends to commercially benefit from the Internet traffic that is misdirected to its <nyxthailand.info> website. Using the domain in this manner demonstrates Respondent’s bad faith under Policy ¶4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Additionally, Respondent had knowledge of Complainant’s rights in the NYX mark prior to registering the at-issue domain name. Such prior knowledge is inferred from the notoriety of Complainant’s NYX mark, the incorporation of Complainant’s entire mark in the at-issue domain name and because Complainant’s mark is displayed on the <nyxthailand.info> website. Respondent’s prior knowledge of Complainant’s trademark rights in the confusingly similar at-issue domain name shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyxthailand.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 21, 2013
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