Kylie Jenner, Inc. v. Jace Monroe
Claim Number: FA2005001896380
Complainant is Kylie Jenner, Inc. (“Complainant”), represented by Jennifer Ko Craft of Dickinson Wright PLLC, Nevada, USA. Respondent is Jace Monroe (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kyliejennerbeauty.com>, registered with GoDaddy.com, LLC.
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.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2020; the Forum received payment on May 14, 2020.
On May 18, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kyliejennerbeauty.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 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@kyliejennerbeauty.com. Also on May 19, 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.
A timely Response was received and determined to be complete on June 12, 2020.
On June 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low as Panelist.
On June 22, 2020, the Panelist received Additional Submission by Complainant dated June 18, 2020 and Additional Submission by Respondent dated June 19, 2020.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers a wide range of beauty-related products and services, including cosmetics, beauty, and make-up products. Complainant has rights in the KYLIE JENNER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,351,328, registered Dec. 05, 2017). See Compl. Annex 2. Respondent’s <kyliejennerbeauty.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “beauty” and the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the <kyliejennerbeauty.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to divert Internet users seeking Complainant’s goods and services with a parked webpage.
Respondent registered and used the <kyliejennerbeauty.com> domain name in bad faith. Specifically, Respondent attempted to attract Internet users to a confusingly similar for commercial gain by offering pay-per-click hyperlinks. Furthermore, Respondent had actual knowledge of Complainant’s rights in the KYLIE JENNER mark at the time of registration.
In its Additional Submission, Complainant argued that, inter alia, the Response was incorrectly predicated upon a change Respondent made to the website
linked to the domain name after the Complaint was filed, which is apparently now a GoDaddy parking page; but even if the Panelist were to rely on the “new” parked page linked to the domain name, there would still be likelihood of confusion.
B. Respondent
Respondent purchased the domain in March 2018 from GoDaddy registrar. Respondent asserts that no evidence of bad faith has been presented and asserts that the domain name is not confusingly similar to Complainant’s mark as it does not sufficiently meet various facts for “likelihood of confusion.” The domain name does not contain links to third party businesses offering services that compete with Complainant’s goods and services. There is no redirection to 3rd party sites that would create competition, therefore there is no confusion, and ultimately there are no damages to her or her brand. Kylie Jenner is not injured.
In its Additional Submission, Respondent argued that, inter alia, once this Complaint was brought to Respondent’s attention, the domain name was locked and Respondent could not have made a change to the website. Respondent repeated that there was no confusion and that Kylie Jenner has suffered no harm or damage to her brand.
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.
The Panel considers that Complainant has satisfied this element.
Complainant has rights in the KYLIE JENNER mark through its registration of the mark with the USPTO (e.g., Reg. No. 5,351,328, registered Dec. 05, 2017). Registration with the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i).
The <kyliejennerbeauty.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “beauty” and the “.com” gTLD. Adding a generic term to an otherwise recognizable mark is generally not sufficient to distinguish the domain name from a complainant’s mark under Policy ¶ 4(a)(i). On the contrary, given Complainant’s registration and use of the mark in relation to beauty and cosmetics products and services, the Panel finds that the addition of the generic term “beauty” adds to the confusing similarities.
The Panel considers that Complainant has satisfied this element.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant argues that Respondent has no rights or legitimate interests in the <kyliejennerbeauty.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. The Panel notes the WHOIS record identifies the Respondent as “Jace Monroe” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name.
The Panel also accepts Complainant’s argument that Respondent fails to use the <kyliejennerbeauty.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is apparently directing the domain name to a parked webpage.
Respondent has not produced sufficient evidence to overturn this prima facie case.
The Panel considers that Complainant has satisfied this element.
The Panel notes that Complainant and Respondent have adduced evidence apparently showing different contents of the website associated with the <kyliejennerbeauty.com> domain name, and that the parties have differences as to whether the contents of the website had changed subsequent to the filing of the Complaint. Specifically, Complainant’s evidence shows that the website offers pay-per-click hyperlinks (including hyperlinks to Complainant’s beauty products and competing products), whereas Respondent’s evidence shows that the website is apparently used as a parked website with no such pay-per-click hyperlinks. While the Panel is not in a position to decide on which version of the website shall prevail, it is sufficient for the Panel to point out that neither version of the website has demonstrated a bona fide use of the domain name by Respondent. The Panel considers that given the high degree of similarity between the domain name and Complainant’s mark, the domain name itself is liable to causing confusion even without clicking onto the website that it directs to.
The Panel also accepts Complainant’s argument that Respondent had knowledge of Complainant’s rights in the KYLIE JENNER mark at the time of registering the <kyliejennerbeauty.com> domain name. The domain name does not carry any generic meaning, hence Respondent must have been aware of Complainant and her relevant beauty products and services when registering the domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kyliejennerbeauty.com> domain name be TRANSFERRED from Respondent to Complainant.
Eugene I. Low, Panelist
Dated: June 23, 2020
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