Mary Kay Inc. v. Colourlife SRL
Claim Number: FA2210002016955
Complainant is Mary Kay Inc. (“Complainant”), represented by Emma K. Morehart of Vorys, Sater, Seymour and Pease LLC, US. Respondent is Colourlife SRL (“Respondent”), RO.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marykay.store.ro>, (‘the Domain Name’) registered with H88 Web Hosting S.R.L.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on October 20, 2022; Forum received payment on October 20, 2022.
On Oct 21, 2022, H88 Web Hosting S.R.L. confirmed by e-mail to Forum that the <marykay.store.ro> Domain Name is registered with H88 Web Hosting S.R.L. and that Respondent is the current registrant of the name. H88 Web Hosting S.R.L. has verified that Respondent is bound by the H88 Web Hosting S.R.L. 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 October 21, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2022 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@marykay.store.ro. Also on October 21, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On Wednesday 16, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of the mark MARY KAY registered, inter alia, in the USA and Romania for toiletries with first use recorded since 1963.
The Domain Name registered in 2014 is for present purposes identical to the Complainant’s mark comprising of the latter and adding only the generic second level .store and the ccTLD .ro.
The Respondent does not have rights or a legitimate interest in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name has been used for a web site using the Complainant’s mark in its masthead, material copied from the Complainant’s site and also an ‘About Us’ section that suggested the Respondent was the Complainant which was not a bona fide offering of goods or services or a noncommercial legitimate or fair use. It was registration and use in bad faith confusing Internet users for commercial gain and disrupting the Complainant’s business in full knowledge of the Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark MARY KAY registered, inter alia, in the USA and Romania for toiletries with first use recorded since 1963.
The Domain Name registered in 2014 has been used for a web site using the Complainant’s mark in its masthead, material copied from the Complainant’s site and also an ‘About Us’ section that suggested the Respondent was the Complainant.
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”).
The Domain Name consists of the Complainant's MARY KAY mark (which is registered, inter alia, in the USA and Romania for toiletries with first use since at least 1963), the second level .store and the ccTLD .ro.
The ccTLD does not serve to distinguish a Domain Name from a Complainant’s mark. See Thomson Reuters Global Resources v. Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark”). Nor does the generic second level domain .store.
Accordingly, the Panel holds that the Domain Name is identical to the Complainant’s registered mark for the purposes of the Policy.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason outside of the material complained of which was attached to the Domain Name to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).The use of the web site was commercial so was not legitimate noncommercial fair use.
The web site attached to the Domain Name purported to offer the Complainant’s products using the Complainant's mark in its masthead, material copied from the Complainant’s site and an ‘About Us’ section which suggested the Respondent was the Complainant. The Panel finds this use was deceptive. As such it could not amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v. Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.) see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
The Respondent has not answered this Complaint or offered any explanation to rebut the prima facie case presented by the Complainant above.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site was confusing and deceptive in that visitors to the site might reasonably believe it was connected to or approved by the Complainant as it used the Complainant’s mark in its masthead, copied material from the Complainant’s web site and suggested in its ‘About Us’ section that the Respondent was the Complainant.
Accordingly, the Panel holds that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v. Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use). Further the Respondent is passing itself off as the Complainant. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (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 <marykay.store.ro> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 24, 2022
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