Kylie Jenner, Inc. v. fletcher martin
Claim Number: FA2005001896377
Complainant is Kylie Jenner, Inc. (“Complainant”), represented by John L. Krieger of Dickinson Wright PLLC, US. Respondent is fletcher martin (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kyliebeauty.com>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2020; the Forum received payment on May 14, 2020.
On May 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kyliebeauty.com> 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 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2020 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@kyliebeauty.com. Also on May 15, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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, Kylie Jenner, Inc., offers a wide range of beauty-related products and services, including cosmetics, beauty, and make-up products which are promoted by the reality television celebrity Kylie Jenner. Complainant has rights in the trademark KYLIE based upon its use in commerce since 2010 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 2017. Respondent’s <kyliebeauty.com> domain name, registered on August 17, 2016, is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s KYLIE mark and merely adds the descriptive term “beauty” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <kyliebeauty.com> domain name. Respondent is not licensed or authorized to use Complainant’s KYLIE mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to pass itself off as Complainant and redirect users to websites of Complainant’s competitors.
Respondent registered and uses the <kyliebeauty.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Respondent disrupts Complainant’s business by hosting links to Complainant’s competitors. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the KYLIE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the KYLIE mark based upon its use since 2010, the fame of its owner, Kylie Jenner, and its registration of the mark with the USPTO. Common law use and registration of a mark with the USPTO are generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Lloyds TSB Bank PLC v. Daniel Carmel-Brown, D2008-1889 (WIPO Jan. 27, 2009) (“The Panel also finds that the Complainant has unregistered rights in the mark LLOYDS BANKING GROUP as a result of the extensive publicity given to its intention to use this name following its takeover of HBOS plc.”); Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides archived screenshots of its <kyliecosmetics.com> website dated June 22, 2016 as well as copies of its USPTO registrations for the KYLIE mark. Therefore, the Panel finds that Complanant has rights in the KYLIE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <kyliebeauty.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s KYLIE mark, simply adding the descriptive word “beauty” and the “.com” gTLD. The addition of a descriptive word and a gTLD to a mark may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Complainant further asserts that the specific use of the word “beauty” enhances confusion here as it relates to the cosmetics and makeup products offered by Complainant. See, Ashley Furniture Industries, Inc. v. Webstarts, FA 1354998 (Forum Dec. 3, 2010) (“The addition of such descriptive terms to a registered mark in forming a domain name [<ashleyfurniturerepair.com>] does not result in a unique domain name. This is especially the case where the descriptive terms are closely related to [c]omplainant’s [furniture] business.”) Thus, the Panel finds that the disputed domain name is confusingly similar to the KYLIE mark under 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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <kyliebeauty.com> domain name because Respondent is not licensed or authorized to use Complainant’s KYLIE mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H - D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant as “fletcher martin” and no information in the record suggests that Respondent is known otherwise or that it has authorization to use the KYLIE mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to mislead consumers and direct them to the website they may believe is affiliated with Complainant. Use of a disputed domain name to divert web users to a respondent’s site and confusing them into believing that some sort of affiliation with a complainant exists may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 has provided a screenshot of Respondent’s web page which displays links to competing third parties under titles such as “Kylie Cosmetic,” “Kylie Skin,” “Skincare,” and “Spa Products.” Thus, the Panel finds that Respondent’s use of the disputed domain name to resolve to a pay-per-click site indicates that it lacks rights and legitimate interests in the disputed domain per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has actual knowledge of Complainant’s rights in the KYLIE mark when registering the <kyliebeauty.com> domain name. Actual knowledge of a complainant’s rights in a mark at the time of registration of a domain name can be shown by use of a confusingly similar domain name in direct competition with a complainant. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights due to the fame and notoriety of the KYLIE mark and its namesake Ms. Kylie Jenner, Respondent’s use of the mark in its entirety, and the extensive use and media coverage of Complainant’s KYLIE mark. The Panel notes that Complainant claims that its rights in the KYLIE mark in connection with cosmetics dates back to at least November 2015 and predates registration of the domain name. Complainant provides historical screenshots showing the mark used in commerce dating back to June 22, 2016 and at least one of its USPTO registrations for the KYLIE mark claim a November 30, 2015 date of first use in interstate commerce. Further, use of the word “beauty” in the disputed domain name suggests that Respondent was aware of Complainant’s cosmetics business at the time the domain name was registered. Based upon the available evidence, the Panel finds it highly likely that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the KYLIE mark.
Next, Complainant argues that Respondent has registered and uses the <kyliebeauty.com> domain name in bad faith. Specifically, Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to pass itself off or otherwise falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims that Respondent creates a likelihood of confusion with Complainant and its trademarks by registering a domain that entirely incorporates Complainant’s KYLIE mark and resolving it to a website that features pay-per-click links to products that compete in Complainant’s industry. The Respondent has not filed a Response or made any other submission in this case and so, on the preponderance of the evidence presented, the Panel agrees with Complainant and finds that Respondent has registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kyliebeauty.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 10, 2020
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