WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kylie Jenner, Inc. v. Domain Administrator, See PrivacyGuardian.org / Jefixa, Dirk Kappel
Case No. D2021-2082
1. The Parties
The Complainant is Kylie Jenner, Inc., United States of America (“United States” or “U.S.”), represented by Studio Barbero, Italy.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Jefixa, Dirk Kappel, Germany.
2. The Domain Name and Registrar
The disputed domain name <kyliecosmetics.shop> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2021. On June 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 6, 2021.
The Center verified that the Complaint, together with the amendment to 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on September 2, 2021. 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, Kylie Jenner Inc., is a United States based cosmetics company founded in 2014 by the media celebrity and style icon, Kylie Jenner, and acquired in 2019 by the American multinational beauty company, Coty Inc. The successful line of KYLIE cosmetics commenced in the year 2014, when Kylie Jenner and her mother Kris Jenner founded the company and partnered with Seed Beauty, a retail and product development company.
The Complainant is the owner of several trademark registrations worldwide for KYLIE and variations thereof (such as KYLIE COSMETICS and KYLIE COSMETICS BY KYLIE JENNER), including the following:
- International Trademark Registration No. 1366642 for KYLIE, registered on August 07, 2017, in class 03 (Annex 3.1);
- International Trademark Registration No. 1515738 for KYLIE, registered on July 31, 2019 in classes 05, 08, 09, 11, 14, 16, 20, 21, 26, 27, 28, 32, 33, 35, 43 (Annex 3.2);
- U.S. registration No. 5443643 for KYLIE, filed on April 1, 2015, and registered on April 10, 2018, in classes 41 and 45, claiming first use in commerce respectively as of May 2007 and 2012 (Annex 3.3);
- U.S. registration No. 5595981 for KYLIE, filed on April 1, 2015, and registered on October 30, 2018, in class 35, claiming first use as of August 2014 (Annex 3.4);
- U.S. registration No. 5246500 for KYLIE, filed on June 2, 2017, and registered on July 18, 2017, in class 3, claiming first use as of November 2015 (Annex 3.5) and
- U.S. registration No. 5536206 for KYLIE COSMETICS, filed on February 29, 2016, and registered on August 7, 2018, in class 35 (Annex 3.6), amongst many more registrations in other jurisdictions.
The Complainant has registered numerous domain names worldwide consisting of or comprising the word KYLIE, including, amongst others, <kyliecosmetics.com> registered on September 3, 2015, which it uses for its online shop of KYLIE COSMETICS products.
The disputed domain name <kyliecosmetics.shop> was registered on March 16, 2021 and currently does not resolve to an active site. At the time, the Complainant became aware of its existence and until recently, it redirected to a website displaying – without any disclaimer of non-affiliation and in absence of the Complainant’s authorization – its trademarks with similar advertising images and offering for sale KYLIE COSMETICS products at discounted prices.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar with the trademark KYLIE and identical to the trademark KYLIE COSMETICS in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
The Complainant has not authorized the Respondent to use its trademarks nor to register the disputed domain name.
As soon as the Complainant became aware of the registration and use of the disputed domain name incorporating its registered and well-known trademarks, it instructed its authorized representatives to commence their activities. A cease and desist letter was thus addressed (Annex 8.1) to the registrant of the disputed domain name – initially requesting the support of the Registrar for the forwarding of the communication – on May 7, 2021. On May 10, 2021, said communication was also forwarded to the direct attention of the Respondent, using the shielded email address indicated in the WhoIs database as well as to the possible alias configured on the disputed domain name. It should be in fact noted that the disputed domain name had the mail exchanger record (MX record) – which specifies the mail server responsible for accepting email messages on behalf of a domain name – configured at that time (as per Annex 9), which is a clear indication that the Respondent was/is using the disputed domain name to send fraudulent messages.
Furthermore, the Respondent was imitating the look & feel of the Complainant’s official portal, also copying some of its text (for instance, the About section of “kyliecosmetics.shop” was nearly the same of “www.kyliecosmetics.com/pages/about”. Moreover, the facts that Respondent was offering for sale unauthorized KYLIE COSMETICS products at very discounted prices, and also impersonating the Complainant – without disclosing any information about the real company managing the online store, suggests that the goods promoted on “kyliecosmetics.shop” were likely counterfeited.
In view of the blatant infringement of the Complainant’s intellectual property rights, the Complainant’s representative got in touch with the provider hosting the misleading website published in connection to the disputed domain name, requesting to block access to said online location (see Annexes 10). Even if no formal reply from the hosting provider was received, from the monitoring of the disputed domain name, it was in any case ascertained that said entity opted to comply, since as of May 10, 2021 – as in Annex 11 – the disputed misleading website is no longer reachable (initially it resolved to an error page and at present to an inactive website).
Considering the continued absence of a reply from the Respondent indicating a willingness to transfer the disputed domain name to Complainant and thus cease any possible fraudulent use, including for phishing activities, the Complainant decided to file the present Complaint requesting the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the KYLIE and KYLIE COSMETICS trademarks.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s KYLIE and KYLIE COSMETICS trademarks.
The disputed domain name contains the Complainant’s trademarks KYLIE and KYLIE COSMETICS in their entirety with the generic Top-Level Domain (“gTLD”) “.shop”. A gTLD is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is confusingly similar with the KYLIE and KYLIE COSMETICS trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is an official site of the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry”. Here, the nature of the disputed domain name carries a high risk of implied affiliation.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade name and trademarks KYLIE and KYLIE COSMETICS mentioned in Section 4 above (Factual Background) and the domain name <kyliecosmetics.com> when it registered the disputed domain name on March 16, 2021. By that time, the Complainant had intensely used and registered both marks in several jurisdictions.
By registering the disputed domain name the Respondent was targeting the Complainant and its business by incorporating the Complainant’s trademarks KYLIE and KYLIE COSMETICS in their entirety with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademarks for its own monetary benefit.
The Respondent’s failure to reply to the cease and desist letter and following reminder addressed to its attention by the Complainant’s representative may be considered an additional factor demonstrating bad faith. It has been held by prior panels that failure to respond to a cease and desist letter can be evidence of bad faith; see HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the Respondent registered and was using the disputed domain name intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used mark as to the source, sponsorship, affiliation, or endorsement of the website. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.
Regarding the fact that the disputed domain name does not currently resolve to an active website, the Panel recalls that many UDRP panelists have found that non-use of a domain name does not prevent a finding of bad faith under the doctrine of “passive holding” when circumstances exist such as the distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that all these circumstances are relevant to this administrative proceeding and that the current non-use of the disputed domain name does not prevent a finding of bad faith.
For the above reasons, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled.
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 <kyliecosmetics.shop> be transferred to the Complainant.
Miguel B. O’Farrell
Date: September 16, 2021