Mary Kay, Inc. v. Rahul.redregister c/o private customer
Claim Number: FA0904001256033
Complainant is Mary Kay, Inc. (“Complainant”), represented by Renee
S. Kraft, of Fulbright & Jaworski,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwmarykayintouch.com>, registered with Red Register, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 3, 2009; the National Arbitration Forum received a hard copy of the Complaint April 6, 2009.
On April 14, 2009, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwmarykayintouch.com> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name. Red Register, Inc. verified that Respondent is bound by the Red Register, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 2009, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwmarykayintouch.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." 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 makes the following assertions:
1. The domain name that Respondent registered, <wwwmarykayintouch.com>, is confusingly similar to Complainant’s MARY KAY mark.
2. Respondent has no rights to or legitimate interests in the <wwwmarykayintouch.com> domain name.
3. Respondent registered and used the <wwwmarykayintouch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mary Kay, Inc., markets body care products and cosmetics under its MARY KAY mark, which it has registered with the United States Patent and Trademark Office (ie. Reg. No. 1,070,841 issued August 9, 1977). Complainant has operated websites at the <marykay.com> and <marykayintouch.com> domain names since 1993 and 1998, respectively.
Respondent registered its disputed domain name August 22, 2000. The disputed domain name previously resolved to a website that offered adult-oriented content. The disputed domain name currently redirects Internet users to a website that attempts to download malicious computer software onto the computers of Internet users who visit the website.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 provided evidence of the registration of its MARY KAY mark with the USPTO. The Panel finds Complainant established its rights in the MARY KAY mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant contends that Respondent’s disputed domain name
is confusingly similar to Complainant’s MARY KAY mark. Respondent’s <wwwmarykayintouch.com> domain name contains the MARY KAY
mark, in addition to: (1) the “www” element that is meant to capitalize on
Internet users’ typographical errors; (2) the phrase “in touch,” which
Complainant uses in connection with its business and <marykayintouch.com>
domain; and (3) the generic top-level domain “.com.” The Panel finds these alterations do not
distinguish the disputed domain name from Complainant’s mark, and thus finds
the disputed domain name is confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i).
See Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition
of an ordinary descriptive word . . . nor
the suffix ‘.com’ detract from the overall impression of the dominant part of
the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied); see also Bank of Am. Corp. v.
InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s
domain name <wwwbankofamerica.com> is confusingly similar to the
complainant’s registered trademark BANK OF
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. This Panel, however, examines the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent previously maintained a website at the disputed domain name that contained adult-oriented content. The Panel finds that Respondent incorporated Complainant’s protected mark into a domain name with the purpose of diverting Internet users to a website that featured adult-oriented content. Respondent did not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) and did not show a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and sexually explicit websites).
Complainant asserted that Respondent is currently using the disputed domain name to resolve to a website that attempts to download malware onto an Internet user’s computer. The Panel also finds that this current use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO Mar. 5, 2009) (finding no bona fide offering of goods and services when the respondent used the disputed domain name for the distribution of malware or hostile software); see also Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name, which attempted to download malicious computer software onto Internet users’ computers, was not 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)).
Furthermore, Complainant contended that Respondent is not
commonly known by the disputed domain name.
The Panel finds nothing in the WHOIS information or record to indicate
Respondent is or that Respondent has ever been commonly known by the disputed
domain name and thus finds for Complainant under Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence
in the record); see also
Finally, Complainant contends Respondent has engaged in typosquatting by inserting the “www” element in front of Complainant’s MARY KAY mark, in an attempt to capitalize on a common typographical error, the omission of the period between the “www” element and the mark element of a domain name. The Panel finds the practice of typosquatting constitutes evidence that Respondent lacks rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that Respondent has engaged in this practice. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s use of the disputed domain name to introduce malware onto an Internet users’ computer is presumably an attempt by Respondent to profit from the confusingly similar disputed domain name. The Panel assumes that Respondent receives fees for engaging in this behavior or that Respondent uses information gained from the malware software to obtain some form of revenue. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name to “divert Internet users to a website that uses tactics that may be harmful to users’ computers” is evidence of bad faith registration and use); see also 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO March 5, 2009) (finding the respondent’s use of a website to distribute malware was an attempt to attract Internet users to its website or other online location for commercial gain, by creating a likelihood of confusion with the complainant’s mark).
Complainant also contended that Respondent previously hosted adult-oriented content at the website that resolves from the disputed domain name. The Panel finds that hosting adult-oriented content is evidence that a disputed domain name is being used in bad faith, and that therefore, Respondent registered and used the <wwwmarykayintouch.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to an adult-oriented site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
Furthermore, Respondent’s engagement in the practice of typosquatting through the addition of the “www” element in the disputed domain name, is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwmarykayintouch.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 28, 2009.
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