The Complainant is Mary Kay Inc. of Dallas, Texas, United States of America (“US”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Planet Carta G.M. Planet Carta G.M. of Rimini, Italy, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the registrant.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2018. The Response was filed in Italian with the Center on August 12, 2018. The Center received informal email communications from the Respondent on August 15, 2018.
The Center appointed George R. F. Souter as the sole panelist in this matter on September 3, 2018. 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
The Complainant is a US corporation, trading in body care products and cosmetics in over 35 countries, under the trademark MARY KAY. It employs over 5,000 people, and it achieved a wholesale volume of some 3.25 billion US dollars based on 2017 revenues. Details of widespread trademark protection of the Complainant’s MARY KAY trademark, including US registration No 0817516, dating from 1966 and European Union registration No 001011527, have been supplied to the Panel.
The disputed domain name was registered on November 2, 2017.
According to the evidence submitted in the Complaint, the disputed domain name resolved to a website indicating that “The domain Redirect has not been configured”. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its MARY KAY trademark, being identical to the Complainant’s MARY KAY trademark, together only with the “.cloud” indicator.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent is not commonly known by the disputed domain name, and the Respondent has never received permission from the Complainant to use its MARY KAY trademark.
The Complainant alleges that the disputed domain name was registered in bad faith, and that, in the circumstances of the present case, is being used in bad faith. B. Respondent
A person writing on behalf of the Respondent replied to the notification of the present proceedings, stating that the idea of registering the disputed domain name came to her in a dream (in which “Mary Kay” told her to register the disputed domain name and not to transfer to anyone), she checked with the appropriate Registrar, found that the disputed domain name was available for registration, and duly registered it (the Complainant’s company should have registered the disputed domain name during the sunrise period). She also intimated that the Respondent was willing to transfer the disputed domain name to the Complainant. The Respondent did not file a formal response to the Complaint, and did not address any of the issues relating to confusing similarity, and rights or legitimate interests in the disputed domain name. She claims that she did not register or use the disputed domain name in bad faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is only composed of the Complainant’s trademark MARY KAY, incorporated in its entirety, with the addition of the “.cloud” indicator. It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a generic Top-Level Domain indicator is irrelevant when comparing a trademark with a disputed domain name. In the Panel’s opinion, this line of decisions extends to the “.cloud” indicator, and the Panel finds that the “.cloud” indicator is irrelevant when comparing the Complainant’s trademark with the disputed domain name in the present case. Once the “.cloud” indicator is disregarded, the Complainant’s trademark is identical to the disputed domain name.
Self evidently, the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the disputed domain name is identical to the Complainant’s trademark, the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when registering the disputed domain name, albeit that the Respondent claims that the idea to register it came from a dream, the Panel regards it as appropriate, in the circumstances of this case, to find that the disputed domain name was registered in bad faith, and so finds.
In so far as use in bad faith is concerned, the Panel agrees with the Panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, that there are circumstances in which passive holding of a disputed domain name can constitute use in bad faith. Albeit the Respondent’s claims that she is not in bad faith, the Panel is of the opinion that the circumstances of the present case render it appropriate to find that the disputed domain name is being used in bad faith, and so finds.
Accordingly, the Panel finds that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: September 17, 2018
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