WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kylie Jenner, Inc. v. Xiang Gao (高祥)
Case No. D2021-2738
1. The Parties
The Complainant is Kylie Jenner, Inc., United States of America (“United States”), represented by Studio Barbero, Italy.
The Respondent is Xiang Gao (高祥), China.
2. The Domain Name and Registrar
The disputed domain name <kylie-cosmetics.com> (the “Domain Name”) is registered with West263 International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2021. On August 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the complete contact details.
On August 23, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 24, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2021.
The Center appointed Karen Fong as the sole panelist in this matter on November 9, 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 is a leading beauty brand founded in 2014 by the celebrity Kylie Jenner. The Complainant’s cosmetic products are sold under the trade marks KYLIE, KYLIE COSMETICS and KYLIE COSMETICS BY KYLIE JENNER. These trade marks are registered in many jurisdictions around the world including the United States and China. The earliest trade mark registration for KYLIE submitted in evidence is United States Trade Mark Registration No. 5443643 filed on April 1, 2015 and registered on April 10, 2018 whilst the earliest trade mark registration for KYLIE COSMETICS is United States Trade Mark Registration No. 5561416 filed on September 14, 2015 and registered on September 11, 2018 (individually and collectively referred to as the “Trade Mark”).
The Complainant’s main website is at the domain name <kyliecosmetics.com>. The Complainant’s products are heavily promoted on all the different social media platforms with roughly a total of 32 million followers. The founder of the brand, Kylie Jenner, is well known as one of world’s most followed people on social media with a combined following of over 330 million users.
The Respondent, who is based in China, registered the Domain Name on April 13, 2021. It was connected to a website which offered for sale nail polish under the brands “Little Ondine” and “Miss Candy” (the “Website”). The Complainant’s representatives sent the Respondent a cease and desist letter on May 18, 2021 and a reminder was sent on May 26, 2021. No response was received. The Domain Name is now inactive.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
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 Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks 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 was registered and is being used in bad faith.
B. Language of Proceeding
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Complainant communicates in English;
- The Respondent did not raise any clarifications to the cease and desist letter sent to it indicating its knowledge of the English language;
- Some of the content on the Website was in English;
- The Domain Name is registered in Latin characters and includes the English word “cosmetics”;
- The Domain Name is in the Top Level Domain (“TLD”) “.com” which indicates that the intention was to target English speaking users.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding which indicates that the Respondent is likely to be familiar with the English language. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case, the Domain Name contains the Complainant’s trade mark KYLIE COSMETICS in its entirety with the addition of a “hyphen” between KYLIE and COSMETICS. The Panel does not consider the addition of the punctuation mark affects the identity between the Trade Mark and the Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(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 trade mark 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, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, 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. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not referred to or commonly known by the Domain Name or the Trade Mark. It has not authorised the Respondent to use the Trade Mark in any way including as a domain name. The Website did not show any bona fide offering of goods or services. Instead, the goods offered are goods which compete with the Complainant. This does not confer any rights or legitimate interests. The Respondent is also not making any legitimate noncommercial or fair use of the Domain Name.
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 submitted any response or provided any explanation of its rights or legitimate interests in relation to the Domain Name 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 Domain Name.
Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation. See section 2. 5.1 of WIPO Overview 3.0.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name given the reputation of the Trade Mark, the high profile of the founder of the brand which bears her name and the fact that it was registered prior to registration of the Domain Name.
The fact that the Website used to sell products which compete with the Complainant’s products under the Trade Mark confirms the Respondent’s awareness of the Trade Mark. It is therefore implausible that the Respondent was unaware of the Complainant when it registered the Domain Name.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website are products which compete with the Complainant’s products. The Website was set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s website. Such confusion will inevitably result due to the complete incorporation of the Trade Mark in the Domain Name. Such confusion is potentially detrimental to the Complainant. The Respondent employs the fame of the Trade Mark to mislead users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Website is authorised or endorsed by the Complainant. The current non-use of the Domain Name does not prevent a finding of bad faith under the passive holding doctrine (as stated in section 3.3 of the WIPO Overview 3.0). The Panel therefore finds that the Domain Name has been registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kylie-cosmetics.com> be transferred to the Complainant.
Date: November 26, 2021