NYX, Los Angeles Inc. v. Mary Parker
Claim Number: FA1405001560999
Complainant is NYX, Los Angeles Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Mary Parker (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMED
The domain names at issue are <nyx-co.com>, <nyxsupply.com>, <nyxsupply.info>, <nyxsupply.net>, <nyxsupply.org>, <nyxsupplyco.com>, <nyxsupplyco.info>, <nyxsupplyco.net>, and <nyxsupplyco.org>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2014; the National Arbitration Forum received payment on May 23, 2014.
On May 23, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nyx-co.com>, <nyxsupply.com>, <nyxsupply.info>, <nyxsupply.net>, <nyxsupply.org>, <nyxsupplyco.com>, <nyxsupplyco.info>, <nyxsupplyco.net>, and <nyxsupplyco.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@nyx-co.com, postmaster@nyxsupply.com, postmaster@nyxsupply.info, postmaster@nyxsupply.net, postmaster@nyxsupply.org, postmaster@nyxsupplyco.com, postmaster@nyxsupplyco.info, postmaster@nyxsupplyco.net, and postmaster@nyxsupplyco.org. Also on May 23, 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.
A timely Response was received and determined to be complete on June 11, 2014.
A timely Additional Submission was received by Complainant and deemed to be complete on June 16, 2014.
Respondent submitted an Additional Submission which was received and found to be complete on June 18, 2014.
On June 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, NYX, Los Angeles Inc., uses the NYX mark in connection with cosmetics. Complainant owns 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). Respondent’s disputed domain names are confusingly similar to Complainant’s NYX mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain names. Respondent’s disputed domain names display various third-party click-through links, some of which resolve to Complainant’s competitors.
The disputed domain names have been registered and are being used in bad faith. Respondent is using the disputed domain names to resolve to a pay-per-click website from which she derives revenue through Internet advertising. Respondent had actual knowledge of Complainant’s rights in the NYX mark.
B. Respondent
Complainant’s exclusive rights in the NYX mark are only in connection with cosmetics.
The disputed domain names lead to a GoDaddy parked page clearly stating “This Web page is parked for FREE, courtesy of GoDaddy.com.” Respondent does not use the domain names to resolve to a pay-for-click website from which she receives revenue.
When the Complaint was filed, Respondent’s web site content had not yet been developed. Respondent has not used the disputed domain names since their purchase from GoDaddy. Respondent did not know that the domain names parked with GoDaddy were being used for pay-per-click advertising.
Respondent registered the domain names in preparation to launch a retail and Internet business to sell products which she has been designing for almost a year. These products are designed with a thematic influence drawn from Greek mythology, specifically the goddess, Nyx. Respondent’s product line has nothing to do with cosmetics. Respondent chose the domain names after research involving Greek goddesses, selecting the “nyx” component of the domain name because it was the most evocative of female evening fashion. In addition, nyx sounds like “nik’s” which is similar to the name of Respondent’s son, Nick.
Respondent has not yet begun to market products to the extent that she can produce evidence of bona fide use. The domain names were registered three months ago. The Complaint was filed two months ago. Respondent has not had enough time to get her business up and running.
Respondent’s intent was to preserve the domain names, then apply for trademarks on logos, produce the products, and then put up the website with items ready for sale. Respondent’s logo has been designed and product concepts are ready for production. However, Respondent is hesitant to attach copies of her logos and product designs prior to applying for trademarks.
Respondent has not submitted any evidence of demonstrable preparations to offer goods and services.
Nyx is a generic or descriptive term referring to the Goddess of the Night. Respondent legitimately registered URLs with dictionary terms and it was not in bad faith.
Complainant, NYX, Los Angeles Inc., uses the NYX mark in connection with cosmetics. Complainant owns 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).
Respondent, Mary Parker, registered the disputed domain names on the following dates: <nyx-co.com> on March 5, 2014; <nyxsupply.com> on March 5, 2014; <nyxsupply.info> on March 6, 2014; <nyxsupply.net> on March 5, 2014; <nyxsupply.org> on March 6, 2014; <nyxsupplyco.com> on March 17, 2014; <nyxsupplyco.info> on March 17, 2014; <nyxsupplyco.net> on March 17, 2014; and <nyxsupplyco.org> on March 17, 2014.
The domain names resolve to a parked page. Although Respondent says that she registered the domain names for a business, she has not provided any evidence supporting her claim.
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 has rights in the NYX mark under Policy ¶ 4(a)(i) through registration with the USPTO . See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)(Complainant's trademark registrations with the USPTO establish Complainant's rights in the BLIZZARD mark). Complainant uses the NYX mark in connection with cosmetics.
Respondent’s <nyx-co.com>, <nyxsupply.com>, <nyxsupply.info>, <nyxsupply.net>, <nyxsupply.org>, <nyxsupplyco.com>, <nyxsupplyco.info>, <nyxsupplyco.net>, and <nyxsupplyco.org> domain names are confusingly similar to Complainant’s NYX mark under Policy ¶ 4(a)(i). Respondent adds the generic term “co,” “supply,” or “supplyco” to Complainant’s NYX mark in its disputed domain names. Respondent adds a hyphen to Complainant’s NYX mark in the <nyx-co.com> domain name. Respondent adds a generic top-level domain (“gTLD”) to each of the disputed domain names.
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).
Respondent agrees that she is not commonly known by the <nyx-co.com>, <nyxsupply.com>, <nyxsupply.info>, <nyxsupply.net>, <nyxsupply.org>, <nyxsupplyco.com>, <nyxsupplyco.info>, <nyxsupplyco.net>, and <nyxsupplyco.org> domain names. The WHOIS information for the disputed domain names indicates that “Mary Parker” is the registrant of the disputed domain names. Furthermore, Respondent is not an authorized licensee, distributor, retailer, or subsidiary of Complainant. Respondent has never been authorized to use Complainant’s NYX mark. Therefore, Respondent is not commonly known by the disputed domain names 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 asserts that Respondent’s <nyx-co.com>, <nyxsupply.com>, <nyxsupply.info>, <nyxsupply.net>, <nyxsupply.org>, <nyxsupplyco.com>, <nyxsupplyco.info>, <nyxsupplyco.net>, and <nyxsupplyco.org> domain names display various third-party click-through links, some of which resolve to Complainant’s competitors. Complainant’s evidence shows that each of Respondent’s disputed domain names leads to a GoDaddy page hosting links such as “ULTA Official Site,” “makeup,” “AVON Representative,” and others. A respondent’s use of a disputed domain name to provide competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, even where the links are generated on a parked site. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (disputed domain name, <usaa-insurance.net>, resolves to website displaying Complainant’s marks and contains links to Complainant’s competitors); see also 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.”).
Although Respondent denies knowledge of the competing links, her inactive parked page is 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).”). Respondent has not provided any evidence supporting her claim of demonstrable preparations to provide goods or services. Therefore, the Panel finds that Respondent is not using the <nyx-co.com>, <nyxsupply.com>, <nyxsupply.info>, <nyxsupply.net>, <nyxsupply.org>, <nyxsupplyco.com>, <nyxsupplyco.info>, <nyxsupplyco.net>, and <nyxsupplyco.org> domain names for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant’s exclusive rights in the NYX mark are limited to the cosmetics field. See Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields). Therefore, Respondent could show rights or legitimate interests in the disputed domain names through a bona fide offering of goods or services or a legitimate noncommercial or fair use. See NYX, Los Angeles Inc. v. Leandros Liasides, FA 1478188 (Nat. Arb. Forum (Feb. 14, 2013)(Respondent proved that he was using or making demonstrable preparations to use the <iamnyx> domain name for bona fide offering of goods or services for his music stage name). However, Respondent has not alleged fair use and she has failed to offer evidence of preparations for her claimed bona fide offering of goods or services related to the Greek goddess Nyx.
Respondent has no rights or legitimate interests in respect to the disputed domain names.
Complainant argues that Respondent is using the <nyx-co.com>, <nyxsupply.com>, <nyxsupply.info>, <nyxsupply.net>, <nyxsupply.org>, <nyxsupplyco.com>, <nyxsupplyco.info>, <nyxsupplyco.net>, and <nyxsupplyco.org> domain names to resolve to a click-through website from which she derives revenue through Internet advertising. However, Respondent says that she had no knowledge of the click-through websites nor has she received any revenue from the parked domain names. Respondent says that the disputed domain names lead to a GoDaddy parked page stating “This Web page is parked for FREE, courtesy of GoDaddy.com.” Respondent says that there is no content being hosted by her at the disputed domain names. Therefore, the existence of the competing links found on the parked page does not constitute bad faith registration and use because Respondent was unaware of the competing links and received no revenue from the links. See Elec. Arts. Inc. v. Abstract Holdings Int’l LTD, FA 1415905 (Nat. Arb. Forum Jan. 4, 2012)(bad faith registration and use not found where the respondent did not want, or know about, the competing hyperlinks found on the resolving website).
However, Respondent’s failure to make active use of and failure to show demonstrable preparations to use the disputed domain names constitutes bad faith registration and use. See NYX, Los Angeles Inc. v. Neftali Mercedes, FA 1478214 (Nat. Arb. Forum Feb. 7, 2013)(bad faith and registration shown where <nyxclique.com> resolved to parked page without content).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyx-co.com>, <nyxsupply.com>, <nyxsupply.info>, <nyxsupply.net>, <nyxsupply.org>, <nyxsupplyco.com>, <nyxsupplyco.info>, <nyxsupplyco.net>, and <nyxsupplyco.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 4, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page