Mary Kay, Inc. v. Nguyet Dang
Claim Number: FA1405001557894
Complainant is Mary Kay, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Nguyet Dang (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marykay.co>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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 May 6, 2014; the National Arbitration Forum received payment on May 6, 2014.
On May 7, 2014, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <marykay.co> domain name is registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 May 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2014 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@marykay.co. Also on May 7, 2014, 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.
After the date for filing a timely response, Respondent sent an email to the Forum concerning filing a response. No response was filed.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
A timely Additional Submission was received by Complainant on June 2, 2014 and deemed to be complete.
On June 5, 2014, 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. 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. Complainant, Mary Kay, Inc., owns the trademark MARY KAY, which it uses in connection with the following products and services: hair and skin care products, make-up, bath oils, mirrors, business supplies and sales aids, handbags, jewelry, clothing, medications, manicure tools, magazines, vitamins, computer software, shop-at-home parties, and kitchen containers.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MARY KAY mark (e.g., Reg. No. 817,516, registered October 25, 1966).
iii. The <marykay.co> domain name is identical to Complainant’s MARY KAY mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent has never been commonly known by the disputed domain name.
iii. Respondent is using the disputed domain name for click-through advertisements redirecting Internet users to third-party websites, including websites of Complainant’s competitors.
iv. Respondent’s disputed domain name sometimes redirects to the website at <http://www.naturalskinshop.com/chemical-peel-center.html>, which is an online cosmetics retail website purporting to offer goods and services identical in nature to those offered by Complainant.
v. Respondent’s disputed domain name sometimes redirects to a page that displays a phony message indicating that the user should update his or her Adobe software.
i. Respondent registered and is using the disputed domain name in bad faith.
ii. Respondent is using the disputed domain name to direct Internet users to websites offering goods and services of the exact nature offered by Complainant.
iii. Respondent is using the disputed domain name to display or redirect to a revolving series of websites that are designed to misdirect consumers to install malicious software.
iv. Respondent is deemed to have both constructive and actual knowledge of Complainant’s rights in the MARY KAY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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.”).
Complainant argues that it owns the trademark MARY KAY, which it uses in connection with the following products and services: hair and skin care products, make-up, bath oils, mirrors, business supplies and sales aids, handbags, jewelry, clothing, medications, manicure tools, magazines, vitamins, computer software, shop-at-home parties, and kitchen containers. Complainant states that it owns trademark registrations with the USPTO for the MARY KAY mark (e.g., Reg. No. 817,516, registered October 25, 1966). The Panel notes that Respondent appears to reside within the United States. The Panel notes that the WHOIS record indicates that Respondent resides in Hawaii, USA while Respondent’s May 28, 2014 email to the Forum states that Respondent is from Argentina. Regardless, the Panel finds that Complainant’s USTPO registrations sufficiently proves its rights in the MARY KAY mark under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”)
Complainant contends that Respondent’s <marykay.co> domain name is identical to Complainant’s MARY KAY mark. Complainant alleges that Respondent adds the country-code top-level domain (“ccTLD”) “.co.” The Panel notes that Respondent also removes the spaces in Complainant’s MARY KAY mark in the disputed domain name. In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” See also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Accordingly, the Panel determines that Respondent’s <marykay.co> domain name is identical to Complainant’s MARY KAY 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 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 argues that Respondent has never been commonly known by the <marykay.co> domain name. Complainant asserts that it has no relationship, affiliation, connection, endorsement or association with Complainant. Complainant asserts that Respondent has never requested or received any authorization, permission, or license from Complainant to use the MARY KAY marks in any way. Complainant contends that there is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain name. The Panel notes that the WHOIS record indicates that “Nguyet Dang” is the registrant of the disputed domain name. Therefore, the Panel finds that, based on the relevant evidence in the record, Respondent is not commonly known under the <marykay.co> domain name under Policy ¶ 4(c)(ii). See 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).
Complainant contends that Respondent is using the <marykay.co> domain name for click-through advertisements redirecting Internet users to third-party websites, including websites of Complainant’s competitors. The Panel notes that Respondent’s disputed domain name contains advertisements that compete with Complainant’s business, such as “Mary Kay Consultant Locator,” “Mary Kay Cosmetics,” “Facial Skin Care,” and others. Complainant argues that Respondent likely receives compensation every time one of the links for these sponsored advertisements is clicked by an Internet user. Prior panels have found that a respondent’s use of the disputed domain name to provide competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Thus, the Panel holds that Respondent is not using the <marykay.co> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant claims that Respondent’s <marykay.co> domain name sometimes redirects to the website at <http://www.naturalskinshop.com/chemical-peel-center.html>, which is an online cosmetics retail website purporting to offer goods and services identical in nature to those offered by Complainant. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel determined that “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.” Accordingly, the Panel finds that Respondent is not using the <marykay.co> domain name for 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).
Complainant asserts that Respondent’s <marykay.co> domain name sometimes redirects to a page that displays a phony message indicating that the Internet user should update his or her Adobe software. The Panel notes that Respondent’s disputed domain name resolves to a page stating “Update Your Flash Player.” In Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009), the panel found that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” The Panel finds that Respondent’s <marykay.co> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant argues that Respondent is using the <marykay.co> domain name to direct Internet users to websites offering goods and services of the exact nature offered by Complainant. The Panel finds that Respondent is using the disputed domain name to provide competing links or to resolve to a competing cosmetic site disrupts Complainant’s business and the Panel holds that Respondent is using the <marykay.co> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is using the <marykay.co> domain name to display or redirect to a revolving series of websites that are designed to misdirect consumers to install malicious software. The Panel notes that Respondent’s disputed domain name resolves to a page stating “Update Your Flash Player.” In Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010), the panel found that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii).” Thus, the Panel holds that Respondent’s <marykay.co> domain name is being used in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent is deemed to have both constructive and actual knowledge of Complainant’s rights in the MARY KAY mark. Complainant claims that Respondent is put on constructive notice via its multiple federal USPTO trademark registrations and numerous worldwide trademark registrations and applications for the MARY KAY marks. Complainant asserts that Respondent was put on actual notice of Complainant’s MARY KAY marks via numerous demand letters sent to Respondent on behalf of Complainant. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel notes that, due to the use of Complainant's MARY KAY mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the <marykay.co> domain name in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because of the link between complainant’s mark and content advertised on respondent’s website was obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”).
Complainant has proven this element.
Complaint having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <marykay.co> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 12, 2014
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