NYX, Los Angeles Inc. v. Phil
Claim Number: FA1405001558525
Complainant is NYX, Los Angeles Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Phil (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nyxmyanmar.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2014; the National Arbitration Forum received payment on May 12, 2014.
On May 10, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <nyxmyanmar.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@nyxmyanmar.com. Also on May 14, 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 June 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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, NYX, Los Angeles Inc., is the owner of the NYX mark, which it has been using in connection with cosmetics since as early as 1999.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NYX mark (e.g., Reg. No. 3,310,409, registered October 16, 2007).
iii. Respondent’s <nyxmyanmar.com> domain name is confusingly similar to Complainant’s NYX mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent’s disputed domain name sends Internet users to a parked webpage that displays third-party click-through links, some of which resolve to Complainant’s competitors.
i. The disputed domain name has been registered and is being used in bad faith.
ii. Respondent is using the disputed domain name to resolve to a pay-per-click website from which it derives revenue through Internet advertising.
iii. Respondent had actual knowledge of Complainant’s rights in the NYX mark at the time that it registered the disputed domain name.
1. Respondent’s <nyxmyanmar.com> domain name is confusingly similar to Complainant’s NYX mark.
2. Respondent does not have any rights or legitimate interests in the <nyxmyanmar.com> domain name.
3. Respondent registered or used the <nyxmyanmar.com > domain name 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 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 alleges that it is the owner of the NYX mark, which it has been using in connection with cosmetics since as early as 1999. Complainant contends that it is the owner of trademark registrations with the USPTO for the NYX mark (e.g., Reg. No. 3,310,409, registered October 16, 2007). See Complainant’s Exhibit D. The Panel holds that although Respondent resides in Singapore, Policy ¶ 4(a)(i) does not require Complainant’s trademark to be registered in the country of Respondent’s residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant has demonstrated that it has rights in the NYX mark through its USPTO registration of the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <nyxmyanmar.com> domain name is confusingly similar to Complainant’s NYX mark. Complainant claims that Respondent’s disputed domain name contains its NYX mark in its entirety while only adding the geographic descriptor “myanmar” and the generic top-level domain (“gTLD”) “.com.” The Panel holds that Respondent’s inclusion of a geographic term and gTLD is insufficient to overcome confusing similarity under Policy ¶ 4(a)(i). See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Therefore, the Panel determines that Respondent’s <nyxmyanmar.com> domain name is confusingly similar to Complainant’s NYX mark according to Policy ¶ 4(a)(i).
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 is not commonly known by the <nyxmyanmar.com> domain name. Complainant asserts that Respondent is not a licensee or subsidiary of Complainant. Complainant contends that Respondent has never been authorized to use Complainant’s NYX mark, nor has Complainant authorized or licensed Respondent to supply to distribute Complainant’s goods and services. The Panel notes that Respondent is listed as “Phil” in the WHOIS record. See Complainant’s Exhibit A. Consequently, the Panel determines that Respondent is not commonly known under the <nyxmyanmar.com> 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 states that Respondent’s <nyxmyanmar.com> domain name sends Internet users to a parked webpage that displays third-party click-through links, some of which resolve to Complainant’s competitors. The Panel notes that Respondent’s disputed domain name resolves to a page featuring competing links titled “Skin Care Products Online,” “Bare Makeup Minerals,” “Eyeshadow Cosmetics,” and more. See Complainant’s Exhibit G. Complainant argues that Respondent commercially gains when an Internet user clicks on one of the links. In ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the panel rejected respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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). Therefore, the Panel determines that Respondent is not using the <nyxmyanmar.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant states that Respondent is using the <nyxmyanmar.com> domain name to resolve to a pay-per-click website from which it derives revenue through Internet advertising. The Panel notes that Respondent’s disputed domain name leads to a website containing links that directly compete with Complainant’s business such as “AVON Representative,” “NYX Cosmetics,” “Eyeshadow Cosmetics,” and more. See Complainant’s Exhibit G. The Panel finds that Respondent is using the disputed domain name to attract Internet users to its own website and commercially benefit, and concludes that Respondent has registered and is using the <nyxmyanmar.com> domain name in bad faith under Policy ¶ 4(b)(iv). 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 contends that Respondent had actual knowledge of Complainant’s rights in the NYX mark at the time that it registered the <nyxmyanmar.com> domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's NYX mark, Respondent had actual knowledge of the mark. Consequently, the Panel holds that Respondent registered the <nyxmyanmar.com> domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyxmyanmar.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 16, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page