Sole panelist – Adv. Adi Barkan-Lev
The decision was given on August 6, 2023.
Background and arguments of the parties:
The Petitioner, a French company, filed a petition for the transfer of the rights to the domain name nyx-israel.co.il (the “Domain Name”), which is held by the Respondent, an Israeli resident.
The Domain Name was registered on May 16, 2021 by a third party and the rights to it were transferred to the Respondent on June 18, 2023. An active website is managed under the Domain Name, branded as “NYX PROFESSIONAL MAKEUP.”
The Petitioner was founded in 1909 and it is a leading commercial group in the international cosmetics industry. The Petitioner has a commercial presence in many countries around the world, in connection with a wide range of products, and it has used the trademark NYX on a regular basis, for many years, for its cosmetics products. The Petitioner has seven registered trademarks for NYX in Israel. The Petitioner’s group of companies has even held the domain name nyxcosmetics.com since 2001. The Petitioner argued that the general public identifies the NYX mark with its products.
The Petitioner corresponded with the previous holder of the Domain Name, who offered that it purchase the rights to it in consideration for USD 350,000. The Petitioner also argued that the Respondent displays its trademarks on the website in order to sell cosmetic products to Israelis, in bad faith.
The Respondent did not submit a response to the petition.
Decision:
The Dispute Resolution Procedure of the Israel Internet Association (IL-DRP) is an alternative dispute resolution mechanism, which is designed to provide a quick resolution for disputes regarding the allocation of domain names in the top-level domain of Israel (ccTLD), conducted pursuant to the Association’s dispute resolution directives. The Respondent accepted these directives upon registration of the Domain Name.
The directives establish that a dispute regarding allocation of a domain name will be heard based on the following conditions:
- The disputed domain name is identical or misleadingly similar to the trademark, trade name, registered company name, or legal entity registration of the petitioner; and –
- The petitioner possesses the rights to the name and the respondent does not possess the rights to the name; and –
- The application for allocation of the disputed domain name was submitted in bad faith or the disputed domain name was used in bad faith.
The Petitioner proved that it owns the trademarks NYX registered in Israel and that it has held the Domain Name that bears this name since 2001. All of these strengthen the Petitioner’s arguments that the disputed Domain Name is identical or misleadingly similar to the trademark, trade name, registered company name, or legal entity registration of the Petitioner. The addition of “Israel” and the suffix “co.il” are “transparent” components that are to be ignored for purposes of determining the similarity between the Domain Name and the Petitioner’s NYX trademarks, since it is a common suffix that indicates that the Domain Name is registered for commercial activity in the top-level domain of Israel. Therefore, the first condition of the directives exists.
The Petitioner provided much evidence testifying to its rights to the NYX trademarks. In the absence of any response from the Respondent, the Petitioner’s arguments should be accepted, establishing that it has been proven that the Respondent does not have a legitimate interest in the Domain Name, at least not one that overrides the legitimate interest of the Petitioner.
The Petitioner argued that the Respondent is attempting to benefit from web surfer traffic by misleading consumers to think that the Domain Name, or the website featured under it, are connected to the Petitioner or to the NYX trademarks.
In the absence of a response from the Respondent, the arguments of the Petitioner should be accepted. It seems that the Domain Name was registered by the Respondent with the intention of interfering with the Petitioner’s business or to create a commercial advantage by causing probable confusion with the Petitioner’s name, with regard to the source of the website, its location, the bodies funding it, bodies connected to it, or a product or service that will be presented on it in the future. The website sells products that appear to be products of the Petitioner, but even if they are original products of the Petitioner, there is a material concern that consumers will be misled as they search for the Petitioner’s website but instead reach this website, which is not connected to it in any manner.
The exaggerated amount that the previous holder of the Domain Name demanded from the Petitioner establishes a concern that the reason that this Domain Name was acquired was primarily in order to sell, lease, or transfer the holding rights to the Domain Name to the Petitioner, or to its competitor – the Respondent, in exchange for consideration that deviates from the direct, proven expenses spent by the name holder to acquire this Domain Name. The fact that the details of the current holder of the Domain Name are apparently incorrect further reinforce this conclusion.
The panel accepted the Petition and ordered transfer of the disputed Domain Name to the Petitioner.
The foregoing constitutes a summary of the decision. For the full decision, click here [PDF].