Mary Kay, Inc. v. karl spielvogel
Claim Number: FA1405001557908
Complainant is Mary Kay, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is karl spielvogel (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marykay.com.co>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, 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 6, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <marykay.com.co> 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 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.com.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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, Mary Kay, Inc. (“Mary Kay”) owns the trademark and trade name MARY KAY. Mary Kay commenced use of the MARY KAY mark and name at least as early as 1963 in connection with body care products and cosmetics. Since that time, Mary Kay has maintained substantial and continuous use of the MARY KAY mark and name in commerce in the United States. Over the years, Mary Kay has expanded its use of the MARY KAY mark and presently offers numerous products and services in a variety of fields under the MARY KAY mark. These products and services have included, for example, 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.
In addition to Mary Kay’s extensive common law rights in the MARY KAY trademark, Mary Kay owns the following U.S. federal trademark registrations for its MARY KAY mark: MARY KAY (U.S. Registration Nos. 1,070,841; 1,215,869; 1,215,807; 1,242,880; 1,234,618; 1,221,664; 1,312,253; 1,301,795; 1,513,319; 1,842,599; 1,979,746; 2,088,644; 2,138,669 and 3,470,956); MARY KAY (Stylized) (U.S. Registration Nos. 817,516; 1,208,283; 1,545,983; 1,628,275; and 2,542,184).
Mary Kay also owns more than 200 registrations for the MARY KAY trademark worldwide, including without limitation Colombian Registration No. 205437 for the mark MARY KAY for goods in International Class 03, which has been registered in Colombia since January 1998. The MARY KAY mark is famous.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The Domain Name marykay.com.co is confusingly similar to the MARY KAY Marks in which Mary Kay has trademark rights worldwide.
[i] Mary Kay has rights in its trademarks.
The MARY KAY Marks have been used in commerce in connection with cosmetics and skin care products since at least as early as 1963. Mary Kay is the number one seller of color cosmetic and facial skin products in the United States, utilizing an independent contractor sales force of more than 1.8 million people in 35 markets. Mary Kay has sold billions of dollars worth of products under the MARY KAY Marks both throughout the United States and worldwide. In 2007, wholesale product sales under the MARY KAY Marks reached $2.4 billion.
In addition, Mary Kay has registered and uses the domain name marykay.com to market its products and services under the MARY KAY Marks. Mary Kay registered the marykay.com domain name on September 15, 1993. This website has been in continuous operation since its registration.
Mary Kay has sold billions of dollars worth of products under the MARY KAY Marks both throughout the United States and worldwide. Mary Kay has invested considerable effort, time and money in promoting its products under the MARY KAY Marks and in carefully controlling the public’s perception of the nature and quality of the products associated with those marks. As a result of Mary Kay’s efforts, the MARY KAY Marks have become an extremely valuable and important asset, representing substantial goodwill. The MARY KAY Marks are distinctive, well-known and famous marks.
As noted above, Mary Kay is the owner of at least 19 U.S. federal trademark registrations and more than 200 additional registrations worldwide for the MARY KAY Marks, including in Colombia. It is well established under the Policy that a complainant’s registration of a mark with a federal authority establishes a prima facie case of the complainant’s rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (Nat. Arb. Forum Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”), and Innomed Techs., Inc. v. DRP Servs., FA221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
[ii] The domain name marykay.com.co is confusingly similar to the MARY KAY Marks.
ICANN panels have found that where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN). Furthermore, the addition of a common or generic term to a trademark does nothing to reduce the domain name’s confusing similarity. See Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000) (“The addition of a common or generic term following a trademark does not create a new or different mark in which respondent has rights.”). Moreover, the addition of a generic or country code top-level domain, such as “.co” and “.com” is irrelevant in determining similarity of a domain to a complainant’s trademark. See, e.g., Caviar Petrossian v. Bihua Hosting, DC02013-0004 (WIPO May 4, 2013) (“[t]he element of confusion is nevertheless further enhanced…by the gTLD “.co” which is the Colombian extension and could be construed as a misspelling of [.com].”); Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, FA133759 (NAF Jan. 21, 2003).
In this case the marykay.com.co domain name is identical to and incorporates in its entirety the MARY KAY Marks. The domain name differs from the MARY KAY Marks only by the addition of the top-level domains “.com” and “.co”. These minor differences are insufficient to distinguish the marykay.com.co domain name from the MARY KAY Marks.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name at Issue.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (Nat. Arb. Forum September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Moreover, Respondent must show it has rights or legitimate interest in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interests. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the marykay.com.co domain name.
[i] Respondent has no relationship with Mary Kay.
Respondent has no relationship, affiliation, connection, endorsement or association with Mary Kay. Respondent has never requested or received any authorization, permission or license from Mary Kay to use the MARY KAY Marks in any way.
[ii] Respondent has never been commonly known by the domain name marykay.com.co, or by the MARY KAY Marks, and has never acquired any trademark rights in the same.
There is no evidence in the WHOIS information to suggest that Respondent is known by the subject domain name. Indeed, given Mary Kay’s numerous U.S. and international trademark registrations for the MARY KAY Marks and its long standing and extensive worldwide use of the MARY KAY Marks in connection with cosmetics and skin care products and related services, Respondent could not have developed any rights in the MARY KAY Marks unless Mary Kay licensed the MARY KAY Marks to Respondent or otherwise allowed Respondent to use them. Respondent has no relationship, association, affiliation or connection with or endorsement by Mary Kay.
[iii] Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
The marykay.com.co domain name currently resolves to a “parked” webpage. Respondent does not use and has not made preparations to use this domain name in connection with a bona fide offering of goods or services. Upon information and belief, the Respondent itself neither offers goods nor services. The sole relevant content of the webpage is “Sponsored Listings,” i.e., click-through advertisements based on the respective IP address of the Internet user, which divert Internet traffic to webpages related to the products and services offered by Mary Kay under the MARY KAY Marks. These advertisements accordingly redirect Internet users to third party websites, including the websites of some of Mary Kay’s competitors.
Upon information and belief, Respondent receives compensation every time one of the links for these sponsored advertisements is clicked by an Internet user. ICANN panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6, 2000)(finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Respondent’s use cannot be characterized as fair use. See id. (finding that Respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm”).
Respondent’s use for commercial gain of domain names that are identical to the MARY KAY Marks to direct Internet users interested in Mary Kay’s goods and services to a “parked” webpage advertising websites that offer similar or identical goods and services in competition with Complainant is not a legitimate noncommercial or fair use of the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (NAF Feb. 27, 2001) (respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (NAF Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”) Furthermore, such use is not legitimate because it diverts Complainant’s customers and potential customers to Respondent’s website and to the websites of Complainant’s competitors. See Athanasios Sermbizis, D2000-0923 (finding that Respondent’s domain name which linked visitors to a directory of regional competitors was not a legitimate use). See also Homer, TLC Inc. v. Kang, FA573872 (NAF Nov. 22, 2005) (“Respondent’s use of ‘a’ domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .”). Such use of Mary Kay’s trademarks is clearly confusing and deceptive to consumers. As such, Respondent’s website at the marykay.com.co domain name is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
Even if Respondent did not design these parking pages himself, the content of the website is imputed to Respondent because Respondent ultimately controls the disputed domain names. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (NAF Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Respondent has not used the disputed domain names for a Policy ¶4(c)(ii) bona fide offering, or Policy ¶4(b)(iv) legitimate noncommercial or fair use. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (NAF May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Lastly, Respondent’s use of the marykay.com.co domain name dilutes the MARY KAY Marks. Respondent has diminished consumers’ capacity to associate the MARY KAY Marks with the quality products and services offered by Mary Kay under the MARY KAY Marks by using the MARY KAY Marks in association with websites purporting to offer goods and services that are not associated with or related to Complainant’s goods and services. Respondent’s use creates the very real risk that the MARY KAY Marks are not only being associated with numerous products and services not related to Mary Kay’s own goods and services, but also to goods and services over which Complainant has no quality control.
[c.] Respondent Registered and is Using the Domain Name in Bad Faith.
There are at least three pieces of evidence that show Respondent had knowledge of Mary Kay’s trademark rights, yet proceeded to register and use the marykay.com.co domain name in bad faith: (1) Respondent uses Complainant’s trademarks in its “parked” domain name to direct consumers to commercial websites offering goods and services in direct competition with Complainant; (2) Respondent is deemed to have constructive knowledge of Mary Kay’s trademark rights at the time Respondent registered and began using the marykay.com.co domain name in light of Mary Kay’s numerous U.S. and international trademark applications and registrations for the MARY KAY Marks; and (3) Respondent was put on actual notice of Mary Kay’s trademark rights by way of demand letters sent to Respondent by Complainant’s attorneys.
(1) Respondent is using the Domain Names, which are identical to the MARY KAY Marks, to direct Internet users to third party commercial websites offering goods and services of the exact nature offered by Complainant. Such use is concrete evidence of bad faith registration and use. See, e.g., Society for the Promotion of Japanese Animation v. In Stealth Mode, citing S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (respondent acted in bad faith by attracting Internet users to website that competes with complainant’s business), and Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶4(b)(iii)).
Respondent is moreover using the marykay.com.co domain name to “park” a webpage that contains no substantive content or legitimate offering of goods or services. ICANN Panels have inferred bad faith registration from such usage. See, e.g., (respondent’s use of domain name to “park” a blank webpage for three years was evidence of bad faith); Ceyx Technologies v. Ceyx.Com, D2001-0681 (WIPO July 9, 2001) (Respondent’s “parking” of domain name with the knowledge that it infringed Complainant’s trademark constituted evidence of bad faith).
Furthermore, it is clear that Respondent registered the disputed domain name with the MARY KAY Marks in mind in light of the obvious link between Mary Kay and the content advertised on these websites, as well as the blatant and unauthorized use of the MARY KAY Marks. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”).
(2) Respondent also is deemed to have constructive knowledge of Mary Kay’s rights in the MARY KAY Marks pursuant to multiple federal U.S. trademark registrations and numerous worldwide trademark registrations and applications (including without limitation Registration No. for the MARY KAY Marks. “There is a legal presumption of bad faith when [Respondent] reasonably should have been aware of Complainant’s trademarks, actually or constructively.” See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (Nat. Arb. Forum Jan., 2003) (“Respondent must be held to be on constructive notice of Complainant’s service mark . . . .”).
(3) Lastly, Respondent was put on actual notice of Mary Kay’s trademark rights in and to the MARY KAY Marks via numerous demand letters sent to Respondent on behalf of Complainant. On March 6, 2014, Complainant’s attorneys sent a demand letter informing Respondent of Mary Kay’s trademark rights and insisting that Respondent cease all use of the MARY KAY Marks and transfer the marykay.com.co domain name to Mary Kay. This letter was sent to Respondent by way of Federal Express and via email to the addresses listed in the WHOIS contact information for the marykay.com.co domain name. Thereafter, on March 27, Complainant’s attorneys sent an additional letter, enclosing the March 6, 2014 letter and requesting a response by April 4, 2014. To date, Complainant has not received a substantive response from Respondent.
ICANN Panels have considered a respondent’s failure to respond to such demand letters as evidence of bad faith domain registration. See Regeneron Pharmaceuticals, Inc. v. Whois Privacy Protection Services, Inc./Neuroregeneron, shann lin, D2012-0419 (WIPO May 4, 2012) (where Complainant’s mark was well known, had long history of use and worldwide registrations, and Respondent had not provided evidence of good faith use, Respondent’s failure to respond to Complainant’s demand letter constituted “additional evidence of bad faith.”); Encyclopedia Brittanica v. Zucharini, D2000-0330 (WIPO June 7, 2000) (“Respondents failed to respond to Complainant’s [email and letter (returned undelivered)] provide strong support for a determination of “bad faith” registration and use.”); RRI Financial, Inc. v. Ray Chen, D2001-1242 (Dec. 11, 2001) (“A second factor [to support a finding of bad faith] is Respondent’s refusal to voluntarily transfer the contested Domain Names” after Complainant sent numerous letters without receiving a response). See also Amazon.com, Inc. v. ECC, FA699632 (NAF June 19, 2006) (“Registration of a confusingly similar domain name despite . . . actual or constructive knowledge evidences bad faith registration and use of the domain name pursuant to Policy ¶4(a)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 owns the MARY KAY mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 817,516, registered Oct. 25, 1966) and with Dirección Nacional de Derecho de Autor, the Columbian trademark office (Reg. No. 205,437, registered Jan. 30, 1998). Complainant uses the MARY KAY mark in connection with body care products and cosmetics. Complainant’s trademark registrations satisfy the requirements of Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office”).
Complainant claims the <marykay.com.co> domain name is confusingly similar to the MARY KAY mark. The mark is incorporated in its entirety. The addition of the second-level domain “.com.co” is does not adequately distinguish the mark from the disputed domain name. The <marykay.com.co> domain name includes a third-level domain, and would ordinarily fall outside of the UDRP. However, .CO Internet S.A.S., the registry administrating the “.co” top-level domain, has agreed to apply the UDRP to its third-level domain names, such as the “.com.co” domain names. Therefore, the UDRP applies to this dispute. Previous panels have found top-level domains fail to adequately distinguish a disputed domain name from the mark. This logic applies equally well to second level domain names. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”); see also Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). Eliminating a mark’s imbedded space, as in the present domain name, does not adequately distinguish the mark from the disputed domain name because a space is not a valid character in a domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). Accordingly, the <marykay.com.co> domain name is confusingly similar to the MARY KAY mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. The WHOIS record identifies “karl spielvogel” as the registrant of disputed domain name. Respondent has no legal relationship with Complainant. Respondent has presented no evidence to the contrary. Based upon this information, it seems evident Respondent is not commonly known by the disputed domain name pursuant to 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 claims that Respondent’s use of the domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name. Respondent uses the disputed domain name to direct users to a parked webpage operated by GoDaddy.com. The parking page provides links to various third-parties such as Avon, who compete for Complainant’s business in the cosmetics field. Respondent profits from the linked websites, even if only by getting free web hosting. Previous panels have determined domain names that resolve to parking pages offering links to the complainant’s competitors do not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use and this Panel agrees with that conclusion. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) and (iii), respectively.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is using the disputed domain name to provide links to Complainant’s competitors, disrupting Complainant’s business. The disputed domain name resolves to a webpage providing links to various third-parties, some of which compete for Complainant’s business (such as Avon). Previous panels have found evidence of bad faith registration and use where a respondent uses the resolving page to provide links to Complainant’s competitors and this Panel agrees. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). There is sufficient evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent is using the disputed domain name to resolve to a pay-per-click website from which it derives revenue through Internet advertising. The disputed domain name resolves to a parking webpage operated by GoDaddy.com, LLC, which provides links to various third-parties. Previous panels have held the resolving content is attributable to the respondent even if the disputed domain is operated by a domain parking service provider and this Panel agrees. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”). Even though Respondent doesn’t directly control the parking page, Respondent is responsible to the contents of the parking page because Respondent has elected to use the parking page. Respondent derives a benefit from the parking page by getting free hosting, even though Respondent may not receive any direct payment from GoDaddy.com. 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).”). Therefore, Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent registered the disputed domain name in bad faith because Respondent knew about Complainant’s rights in the mark at the time Respondent registered the domain. Given the notoriety of Complainant’s mark and the surrounding circumstances, it seems a virtual certainty Respondent actually knew about Complainant’s mark at the time of registration. This constitutes sufficient evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”); 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").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <marykay.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, June 5, 2014
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