NYX, Los Angeles Inc. v. Yang Yao
Claim Number: FA1307001508516
Complainant is NYX, Los Angeles Inc. (“Complainant”), represented by Patchen M. Haggerty of Dorsey & Whitney LLP, Washington, USA. Respondent is yang yao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <njnyx.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2013; the National Arbitration Forum received payment on July 8, 2013.
On June 08, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <njnyx.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 July 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2013 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@njnyx.com. Also on July 9, 2013, 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 July 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
i. Complainant owns the NYX mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (i.e., Reg. No. 3,310,409, registered October 16, 2007).
ii. Complainant uses the NYX mark in connection with cosmetics products since 1999. Complainant is recognized for cosmetics worldwide and owns registrations for the NYX mark in more than 35 countries.
i. Policy ¶ 4(a)(i)
1. The <njnyx.com> domain name is confusingly similar to the NYX mark in that the domain name contains the mark in its entirety with the addition of the letters “nj” (presumably an abbreviation for New Jersey), and the generic top-level domain (“gTLD”) “.com”.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not commonly known by the disputed domain name. Respondent has never been authorized to use Complainant’s mark, nor has Complainant authorized Respondent to supply or distribute Complainant’s goods or services.
2. 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 that states that the page is owned by GoDaddy.com, LLC. The resolving page provides links to various third-parties, some of which compete for Complainant’s business, such as Maybelline, and Lancôme. See Exhibit F.
iii. Policy ¶ 4(a)(iii)
1. Respondent is using the disputed domain name to provide links to Complainant’s competitors, disrupting Complainant’s business.
2. Respondent is using the disputed domain name to resolve to a pay-per-click website from which it derives revenue through Internet advertising.
3. Respondent registered the disputed domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the mark at the time Respondent registered the domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its NYX mark.
2. Respondent’s <njnyx.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the 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 claims to own the NYX mark through its trademark registrations with the USPTO (i.e., Reg. No. 3,310,409, registered October 16, 2007). See Exhibit D. The Panel determines that Complainant’s USPTO registrations of the NYX mark establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <njnyx.com> domain name is confusingly similar to the NYX mark in that the domain name contains the mark in its entirety with the addition of the letters “nj” and the gTLD “.com”. Complainant presumes that “nj” is an abbreviation for New Jersey. Previous panels have determined that the inclusion of a geographic term of abbreviation does not distinguish the disputed domain name from a complainant’s mark. In Scholarship America, Inc. v. Private Registrations Aktien Gesellschaft, FA 1387326 (Nat. Arb. Forum June 16, 2011), the panel determined that the <wadollarsforscholars.org> domain name was confusingly similar to the DOLLARS FOR SCHOLARS mark as the inclusions of a gTLD and the term “wa”, the common postal code abbreviation for the state of Washington, did not distinguish the disputed domain name from the mark. The Panel notes that “NJ” is the common postal code abbreviation for the State of New Jersey. The Panel agrees that the gTLD “.com” is irrelevant in this analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel finds that the <njnyx.com> domain name is confusingly similar to the NYX mark pursuant 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 argues that Respondent has no rights or legitimate interests in respect of the domain name. Complainant contends that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record identifies “yang yao” as the registrant of the disputed domain name. See Exhibit A. Complainant further contends that Respondent has never been authorized to use Complainant’s mark, nor has Complainant authorized Respondent to supply or distribute Complainant’s goods or services. Respondent did not submit a Response to refute Complainant’s contentions. As such, the Panel finds that 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. Complainant contends that Respondent uses the disputed domain name to direct users to a parked webpage that states that the page is owned by GoDaddy.com. The resolving page provides links to various third-parties, some of which compete for Complainant’s business, such as Maybelline, and Lancôme. The Panel notes that Complainant provides a screenshot of the resolving page in Exhibit F. Complainant presumes that Respondent profits from the linked websites. Previous panels have determined that domain names that resolve to 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. 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). Therefore the Panel concludes that Respondent’s use of the 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.
Complainant claims that Respondent is using the disputed domain name to provide links to Complainant’s competitors, disrupting Complainant’s business. Complainant argues that such disruption reveals Respondent’s bad faith, albeit in its Policy ¶ 4(a)(ii) contentions. The disputed domain name resolves to a webpage that provides links to various third-parties, some of which compete for Complainant’s business, such as Maybelline, and Lancôme. See Exhibit F. Previous panels have found evidence of bad faith disruption where a respondent uses the resolving page to provide links to competitors of Complainant. 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). The Panel finds evidence of bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that Respondent is using the disputed domain name to resolve to a pay-per-click website from which it derives revenue through Internet advertising. The Panel notes that Exhibit F, which shows that the disputed domain name resolves to a webpage, apparently operated by GoDaddy.com, LLC, to provide links to various third-parties. The Panel notes that previous panels have held that the resolving content is attributable to the respondent even if the disputed domain is operated by a domain parking service provider. 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.”). Previous panels have found evidence of bad faith registration and use where the respondent uses the disputed domain name to offer links to third-party websites, from which respondent likely profits. 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, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the mark at the time Respondent registered the domain. Complainant contends that it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant’s rights given the fame and notoriety of Complainant’s NYX mark. Given the fame of Complainant’s mark, the Panel determines that Respondent had actual knowledge of Complainant’s mark at the time of registration, and therefore find evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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")."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <njnyx.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 8, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page