WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Cynthia Hillier
Case No. DBIZ2002-00165
1. The Parties
The Complainant in this administrative proceeding is Revlon Consumer Products Corporation whose principal place of business is located at 625 Madison Avenue, New York, New York 10022, United States of America.
The Respondent in this administrative proceeding is Cynthia Hillier, whose address is 18 Spring Street, Lexington, Massachusetts 02421, United States of America.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is <flex.biz> which is registered with Alldomains.com, Inc.
3. Procedural History
Complainant has standing to file a Start-up Trademark Opposition Policy ("STOP") Complaint, as it timely filed the required intellectual property (IP) claim form with the Registry Operator, NeuLevel. Complainant initiated this proceeding under the STOP Policy by filing a Complaint which was received by the WIPO Arbitration and Mediation Center ("WIPO") on April 27, 2002. After notifying Complainant of a deficiency and receiving a modified Complaint, WIPO verified that the Complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules"). Complainant paid the requisite filing fees.
On June 4, 2002, WIPO transmitted notification of the Complaint and commencement of the proceeding to Respondent setting forth a deadline of June 23, 2002, for the Response. WIPO later extended the response deadline pursuant to Respondentís request for an extension. The response was received on June 28, 2002, and was considered timely filed by WIPO.
On July 22, 2002, the WIPO Center sent a Notification of Appointment of Administrative Panel in which Roderick M. Thompson was appointed to serve as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The projected decision date, as determined by WIPO and transmitted to the parties on July 22, 2002, is August 5, 2002.
4. Factual Background
Complainant manufacturers markets and sells cosmetics and other beauty products. Complainant provided evidence of a U.S. trademark registration for the mark "FLEX" in connection with hair care products. Complainantís products bearing the FLEX trademark have been sold in the United States since 1958.
In March 2002 Respondent was notified of her successful registration of the disputed domain name. As of the commencement of this proceeding, Respondent had made no use of the disputed domain name in connection with an active website.
5. Partiesí Contentions
Complainant alleges that the disputed domain name is identical to the FLEX trademark in which it has rights.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that it conducted "diligent research" and was unable to locate any references to the Respondent or her use of the term "Flex" in connection with a commercial business enterprise. Complainant states that Respondent does not operate a business or other organization under the FLEX mark. Complainant also asserts that the contact information provided by the Respondent is a residential not a commercial listing, to support the argument that Respondent has no intended legitimate commercial use of <flex.biz>.
As support for Complainantís assertion that Respondent does not have rights or legitimate interests in the domain name, Complainant claims that: 1) Respondent does not have a relationship with Complainant or permission from Complainant to use the FLEX mark, 2) Respondent had constructive knowledge of Complainantís rights in the FLEX Mark, and 3) given the international reputation of the Complainant and its FLEX brand, it can be inferred that Respondent has no rights to the domain name. Further, Complainant claims that despite its research, Complainant has been unable to determine that Respondent used the domain name in connection with a bona fide offering of goods or services before notice of the dispute or that Respondent has been commonly known by the domain name.
Complainant alleges that Respondent has registered and used the disputed domain name in bad faith. In support of this contention, Complainant asserts that: 1) given the international reputation of Complainantís brand it can be inferred that Respondent has no rights to the domain name and that the domain name was registered and is being used in bad faith, 2) there is no evidence that Respondent ever had any plans to make use of the domain name, 3) Respondent has not made use of the domain name, and 4) no trademarks have been filed or companies organized by the Respondent in preparation to use the domain name.
Complainant concludes that the inaction by Respondent coupled with Respondentís constructive knowledge of the FLEX mark and the use of the entire FLEX mark in the domain name "creates an absence of any plausible use of the domain name that would constitute good faith."
Respondent states that she plans to use the flex.biz domain name as the URL for a website that will allow people to access information on topics related to the generic word "flex". She categorically asserts that she has not used and does not plan to use the term "flex" in relation to shampoo, hair conditioning, or any other cosmetic or personal beauty products. According to Respondent although Revlon may have an international reputation in connection with the use of the term "flex," that reputation pertains only to Complainantís field of use and does not supersede anyone elseís right to use the generic word "flex."
When the .biz top level domain was announced, Respondent submitted applications to register the following generic terms: <flex.biz>, <eastcoast.biz>, <email.biz>, <fact.biz>, <firmware.biz>, <thebest.biz>, <therapy.biz>, and <whois.biz>. Respondent claims that her goal was to register one or more "industry-related generic terms" that could be profitably used to market goods and services related to the generic use of the term. She intended to use the domain name to lead to a resource site providing information related to the word in the domain name.
Of the eight domain names Respondent sought to register, she was awarded only the <flex.biz> name through the "Round-Robin" process. Respondent claims that on April 2, 2002, shortly after being notified of her successful registration, and more than three weeks before receiving notice of this Complaint, she created a prototype website for use with the <flex.biz> domain name. As evidence to support this claim with her Response, She provided printouts of the prototype website and a directory for each showing a "last modified" date of April 2 or 3, 2002. The prototype website contains many links to web pages with information on four categories: exercising flexibility, flexible packaging, flexible printed circuit boards and interconnects, and GNU Flex and Lex software development tools. Respondent claims that this website, which was created prior to the filing of the Complaint, clearly evidences her intent to use the domain name for a bona fide offering of goods and services.
Respondentís plan is to support the website via banner advertising. She provided documentation (Exhibit 6) regarding her participation in Amazon.comís associates program also showing a date of April 2, 2002óalthough this refers to "Lex & Yacc" as the only item and does not refer to respondent by name. Respondentís prototype includes a link to the "Lex & Yacc" home page under the "GNU Flex and Lex software category." Respondent represents that the website will be operational as soon as the domain name is allowed to resolve. The name has been on hold since it was registered due to the existence of Complainantís IP claim and the subsequent filing of this dispute.
In response to Complainantís assertions that it conducted diligent research, Respondent claims that if Complainant had contacted her regarding her intended use of the domain name she would have disclosed her intended use of the name and the location of the prototype website.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
The STOP Policy is the set of rules applying to the resolution of domain name disputes involving IP Claimants that have been notified by NeuLevel, the Registry Operator of the .biz generic top level domain (gTLD), of the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The STOP Policy is similar, but not identical to, to the Uniform Domain Name Dispute Resolution Policy (UDRP) that has been applied by Administrative Panels in determining numerous disputes.
Pursuant to paragraph 4 (a) of the STOP Policy, in order to establish the right to transfer of the disputed domain name from Respondents, Complainant must demonstrate each of the following:
(i) The disputed domain name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in the domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
B. Application of Paragraph 4(a) to the Facts
I. Identical to Trademark
Complainant has submitted strong evidence of its rights in the mark FLEX, and its impressive investment in promoting the name for its hair products. Respondent does not dispute that the <flex.biz> domain name is identical to the Complainantís mark. The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights.
II. Respondentsí Rights and Legitimate Interests in the Domain Name
Paragraph 4(c) of the STOP Policy sets out, without limitation, examples of circumstances that demonstrate the Registrantsí rights or legitimate interests in the name. One such circumstance is "demonstrable preparations to use" the disputed domain name in connection with a bona fide offering of services prior to notice of a dispute. Here, Respondent has provided evidence of her plans to use the domain name in connection with a resource website that would provide links to information on various topics related to be term "flex." Respondent argues that this prototype website, which was created prior to filing of the Complaint, evidences her intent to use the domain name for a bona fide offering of goods and services.
The .biz TLD is intended solely for commercial and business use, and thus non-commercial use, without more, is not sufficient to give rise to a legitimate interest in the name. According to a glossary of terms provided by NeuLevel, the Registry Operator of the .biz TLD, a "bona fide business or commercial use" includes use of the domain name to facilitate the exchange of goods, services or information. Respondentís intended use of the website, facilitating access to information regarding various goods or activities that relate to the term "flex," appears to fall within this definition. Although not required by the definition in the NeuLevel glossary, Respondentís use of amazon.com banner advertising bolsters her assertion of a commercial use.
Complainant argues that Respondentís failure to use the disputed domain name promptly following registration evidences lack of rights or legitimate interests, as well as bad faith. Domain name registrants are not required to make immediate use of those names to establish rights or interests. Further, because the domain name was automatically placed on a 30-day hold pursuant to NeuLevelís "cooling off period," it would not have been possible for Respondent to have used the domain name promptly following registration.
Based on the evidence presented by Respondent of her preparations and intended use of the web site, the Panel finds that Respondent has a legitimate interest in the domain name.
III. Registration or use in bad faith
Complainant alleges that Respondent had constructive knowledge of Complainantís registered U.S. trademark and that this constructive knowledge is sufficient to support a finding of bad faith. In this case, however, Respondent appears to have had actual knowledge, not merely constructive knowledge, of Complainantís mark. It is the policy of NeuLevel that a domain name applicant receive a conflict notice in any situation where there is an IP claimant as part of the "Round Robin" process. After receiving such notice, the domain name registrant (Respondent here) must decide whether to proceed with the application despite having been notified of a third partyís intellectual property rights. If the applicant does nothing, the application is deemed cancelled. Thus, Respondent presumably had actual notice of Complainantís trademark rights prior to electing to proceed with the domain name registration.
However, actual knowledge may not be evidence of bad faith. Notification to Respondent that Complainant asserted trademark rights in the FLEX mark in connection with beauty products does not necessarily support an inference that Respondentís registration of the <flex.biz> domain name was made in bad faith. Trademark rights and domain name rights are not coextensive. One may register a domain name for a legitimate purpose even with knowledge that another party has trademark rights in a corresponding mark. Mere knowledge that another party claims such trademark rights in the same name, by itself, is not evidence of a bad faith registration, particularly where the name involved is a common term such as "Flex" and where there are multiple IP Claimants asserting rights to the name. A contrary rule would dictate a bad faith finding in every BIZ STOP proceeding because, by definition, every registrant will necessarily have received notice of the existence of at least one IP Claimant.
The extent to which a mark is famous may influence whether a domain name registrant evidences bad faith by its registration with knowledge of the mark. Here, Complainant has asserted fame in a common term and Respondent has provided a reasonable explanation for her decision to register the disputed domain name for use in unrelated fields. Complainantís assertion of fame under these circumstances is not sufficient to impute bad faith on the part of Respondent. The remainder of Complainantís arguments regarding Respondentís bad faith are based on unsupported speculation and inferences which have been refuted by Respondentís evidence of her intended commercial use of the name.
The Panel finds that Complainant has not established that Respondent registered or used the disputed domain name in bad faith.
Based on its determination that Complainant has failed to establish that Respondent registered or used the disputed domain name <flex.biz> in bad faith, the Panel directs that the complaint is hereby dismissed. Further, based on its determination that Respondent has a legitimate interest in the domain name, no subsequent BIZ STOP challenges to the domain name shall be permitted.
Roderick M. Thompson
Dated: August 5, 2002