In the recent domain name dispute decision of Mary Kay Inc. v. Open Water Enterprises Limited c/o Louis S FA1286701 (Nat. Arb Forum, November 12, 2009) a single member Panel was faced with a dispute over the domain www.mayrkay.com. Complainant Mary Kay is the well known manufacturer and distributor of body care and cosmetic products, with rights dating back to 1963. Complainant owns the mark MARY KAY and operates a web site at www.marykay.com. Respondent registered the disputed domain in 2003 and failed to respond to the Complaint.
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 addressing the first element, the Panel recognized the trademark registrations for the MARY KAY mark and found that Complainant’s rights were established under Policy paragraph 4(a)(I). The Panel found that the disputed domain was a misspelled version of Complainant’s mark MARY KAY, with the r and y letters transposed. For this reason, the Panel found that MARY KAY satisfied the first element.
In addressing the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel explained:
The relevant WHOIS information identifies the registrant of the disputed domain name as “Open Water Enterprises Limited c/o Louis S,” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the <mayrkay.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)….Respondent’s <mayrkay.com> domain name resolves to a website featuring click-through links and advertisements for Complainant’s competitors in the body care and cosmetics industry. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii)….Respondent’s <mayrkay.com> domain name qualifies as typosquatting, given the transposition of two letters in the MARY KAY mark. As such, Respondent’s attempt to capitalize on the typographical errors of Internet users constitutes evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Moving to the final element, bad faith, the Panel explained that Respondent had been involved in other prior UDRP proceedings and a pattern of bad faith registration has been established. Additionally, since the web site resolved to promote MARY KAY competitors via click-through links, it disrupted Complainant’s business. Further evidence of bad faith was from click through fees presumably generated from these links. Lastly, the Panel found that Respondent engaged in typosquatting.
For all these reasons, the Panel ordered the domain be TRANSFERRED.
