WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kiss Nail Products, Inc. v. E-Promote Case No. D2009-1303 1. The Parties
Complainant is Kiss Nail Products, Inc. of Port Washington, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
Respondent is E-Promote of San Francisco, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2009. On October 2, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name. That same day Dotster, Inc. transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 29, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 3, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a manufacturer and distributor of professional-quality nail products, including nail enhancement, nail art, nail files and pedicure and manicure products. It also makes and distributes other beauty enhancement and grooming products such as artificial eyelashes and hair trimmers and a full line of cosmetic products.
Complainant is incorporated as “Kiss Nail Products, Inc.” and operates both under this trade name and the name “Kiss Products, Inc.” Complainant labels its goods with one of those names.
Since at least as early as 1989, Complainant has been selling its nail and beauty products in the United States under the KISS mark. In 1995, Complainant began selling its products outside of the United States. Now, Complainant's products are sold under the KISS mark in 90 countries around the world.
Currently, Complainant offers about 400 SKU's (stock keeping unit) for products all of which bear the KISS mark and one of Complainant's trade names on the products and/or the product packaging. These products are sold in more than 30,000 retail locations in the United States and thousands of additional locations outside the United States. Over the last five years, Complainant shipped nearly USD 350 million of products in the United States and nearly USD 100 million in products outside the United States.
Complainant's products routinely receive editorial coverage from publications in the United States including Cosmopolitan, O, Seventeen, and Women's World magazines. This coverage is seen by millions of consumers. In addition to this coverage, Complainant advertises its products and services in magazines such as Allure, Seventeen, Glamour, and People Stylewatch. The combined circulation of those publications exceeds 6 million with readership over 16 million. Complainant also advertises on national television stations such as CW11, MTV, VH1 and E!, reaching over 1.3 billion households in 2009 alone.
Complainant also has registrations for the KISS mark throughout the world including registrations in the United States (e.g., Registration Nos. 1759380 and 2248495). Since 1997, Complainant has maintained an Internet presence at “” about its KISS products, “How To” videos and other information about Complainant's products and business. That website has garnered more than 175,000 visitors since August 2007. With regard to its cosmetics products, Complainant maintains an Internet presence at “”.
The Domain Name was registered on September 19, 2002. 5. Parties' Contentions A. Complainant
Complainant claims it has strong rights in the KISS mark based on its use of the mark since at least 1989, its use of the KISS mark on beauty products outside of the United States since 1995, its web presence at “” since 1997, its United States trademark registrations, the earliest of which issued in 1993, and its worldwide trademark registrations. Complainant also asserts that the Domain Name is confusingly similar to its KISS mark because the Domain Name incorporates the KISS mark in its entirety. According to Complainant, the addition of the generic term “products” does not alleviate confusion and, in fact, exacerbates it because Complainant operates under the trade name “Kiss Products, Inc.”
Complainant asserts that Respondent does not have any legitimate interest in the Domain Name insofar as there has never been any relationship between Complainant and Respondent that would give rise to any license, permission, or authorization for Respondent to use or register the Domain Name. Furthermore, the Domain Name is not a nickname of Respondent or related to a legitimate interest Respondent has insofar as Respondent is using the Domain Name for commercial purposes.
As of the date that Respondent registered the Domain Name, Complainant had been operating under the Kiss Products, Inc. and Kiss Nail Products, Inc. trade names for many years, had been using the KISS mark over twelve years, and had United States and foreign trademark registrations.
Until recently the Domain Name was used in connection with a landing page filed with links primarily to nail care products and services and a photograph of a woman applying nail polish. Clicking on any one of the links would take a user to another landing page filled with sponsored links including to Complainant's competitors. Sometime between September 9, 2009 and October 1, 2009, the website associated with the Domain Name changed slightly, but the landing page remain filled with links primarily to beauty related products and services. Thus, Respondent is seeking to attract consumers looking for Complainant's products and through the landing pages and links, Respondent is generating income based on the recognition and reputation of the KISS mark. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on Complainant's uncontested evidence of its use of the KISS mark and the United States trademark registrations for the KISS mark, the Panel concludes that Complainant has rights in the KISS mark.
The Domain Name incorporates in its entirety Complainant's KISS mark. Where a domain name incorporates complainant's mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105. Adding the generic term “products” to Complainant's KISS mark does not alleviate the confusion. In fact, it is likely to increase the likelihood of confusion because Complainant does business under two trade names that include “kiss” and “products” (“Kiss Products, Inc.” and “Kiss Nail Products, Inc.”) and Complainant is in the business of selling “products.”
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Complainant asserts that it has no relationship with Respondent that would give rise to any license, permission or authorization to use the KISS mark, such as in the Domain Name. Complainant also asserts that Respondent cannot have any legitimate interest or rights in the Domain Name because Respondent adopted and began using the Domain Name many years after Complainant had established rights in the KISS mark and because Respondent is using Complainant's KISS mark to generate click-through revenue. Complainant's facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainants' favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has established element (ii) above. C. Registered and Used in Bad Faith
By not submitting a Response, Respondent has failed to invoke any circumstances that could demonstrate Respondent did not register and use the Domain Name in bad faith. Furthermore, as Complainant has shown: (1) it is unlikely Respondent was unaware of the KISS mark when it registered the Domain Name considering Complainant's long and widespread use of the KISS mark before Respondent registered the Domain Name and the fact that Respondent refers to Complainant's goods on its website; and (2) the Domain Name links to a landing page, which links to other pages providing sponsored links (including Complainant's business and competitors of Complainant) to generate click-through revenue.
The Panel concludes that by using the confusingly similar Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's KISS mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films,WIPO Case No. D2006-0893. Further, the Panel finds that the sponsored links for businesses in the same field or providing overlapping services as those of Complainant's are an indication of bad faith. Even if the users who access Respondent's website may conclude that it is not what they were originally looking for, Respondent has already succeeded in its purpose of using Complainants' marks to attract users for commercial gain. See Red Bull GmbH v. Unasi Management Inc.,WIPO Case No. D2005-0304.
The Panel therefore holds that Complainant has established element (iii) above. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Dated: November 13, 2009
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