Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented internally.
Respondent is IONE Inc. of Niles, Illinois, United States of America, represented by Law Offices of Jeff Smith, United States of America.
The disputed domain name <revlonhairs.com> (“Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2010. On June 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On June 18, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent IONE Inc. is listed as the registrant and providing the contact details. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2010. The Response was sent to the Center on July 14, 2010.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on July 20, 2010. 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.
Complainant manufactures, markets and sells in the United States (“U.S.”) and worldwide a range of cosmetics and related beauty care products.
Complainant owns and uses the REVLON trademark. Complainant here submits proof of ownership of 14 registrations of the REVLON mark on the Principal Register of the United States Patent and Trademark Office, including the following:
Registration No. 1,625,545, dated December 4, 1990, first use in commerce 1966, in Class 3 for hair care products, namely shampoos, conditioners, treatments, moisturizers, coloring preparations, relaxers, permanents, hairsprays, and hair styling preparations;
Registration No. 1,886,476, dated March 28, 1995, first use in commerce 1993, in Classes 9 and 11 for, inter alia, electric hair curlers and electric curling irons;
Registration No. 3,035,671, dated December 27, 2005, first use in commerce 1932, in Class 3 for, inter alia, cosmetics and hair care preparations;
Registration No. 2,662,778, dated December 17, 2002, first use in commerce 1992, in Class 26 for wigs and hairpieces;
Registration No. 2,886,732, dated September 21, 2004, first use in commerce 1992, in Class 9 for electric or battery operated appliances for the hair.
Respondent registered the Domain Name, <revlonhairs.com>, on December 21, 2007.
The Domain Name opens to a website exhibiting several sponsored results for hair color products, including both Revlon and competing products, hair salons and spas, cosmetics, and related products and services. The site indicates that it is parked free courtesy of the Registrar.
Complainant contends that its products are sold in approximately 175 countries, that it has used its REVLON trademark continuously since 1932, and that the mark is registered around the world for a variety of goods in various international classes. Complainant contends that it, or its subsidiaries or affiliates, own over 50 U.S. trademark registrations incorporating the REVLON trademark and more than 2,600 trademark registrations or pending trademark applications around the world incorporating the REVLON mark.
Complainant asserts that its REVLON trademark is its most valuable asset and that its protection is very valuable to its business. Complainant says that in 2009, it spent over USD 230 million in advertising its product line, with the majority of that amount being spent on the REVLON brand. Complainant has historically advertised in print, on television, in point-of-sale materials, and on the Internet. Complainant contends that its REVLON trademark is famous.
Complainant contends that it also owns approximately 450 domain name registrations worldwide, more than 200 of which incorporate the REVLON trademark and variations of that mark, and that it has maintained a presence on the Internet since 1997 when it launched its website at “www.revlon.com”.
Complainant contends that the Domain Name is confusingly similar to Complainant's REVLON trademark. The Domain Name incorporates the trademark in its entirety. The addition to the trademark of the descriptive, generic term “hairs” does not avoid the likelihood of confusion; it adds to it.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent has no relationship with Complainant, and Complainant has not authorized Respondent to use the REVLON trademark.
Complainant contends that Respondent has not demonstrated that it used the Domain Name in connection with a bona fide offering of goods or services. Respondent is not an authorized dealer of Revlon products and has not, Complainant argues, satisfied the factors identified in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Respondent has owned the Domain Name since 2007 but has only used the Domain Name to lead to a parked website that contains sponsored links to third-party sites relating to Complainant's competitors. The site does not disclose its relationship with Complainant.
Further, Complainant contends that use of a domain name such as that being made by Respondent, a sponsored links page, does not constitute a bona fide offering of goods or services, nor does it represent a legitimate noncommercial or fair use.
Complainant contends that Respondent registered and is using the Domain Name in bad faith, based on the following reasons:
Complainant's REVLON trademark is distinctive, fanciful and famous. It is inconceivable that Respondent did not know of Complainant's trademark when it chose to register the Domain Name. Registration and use of a famous trademark which belongs to someone else, without proving any rights or legitimate interests in it, represents bad faith registration and use.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website, which constitutes bad faith under the Policy, paragraph 4(b)(iv).
Respondent does not dispute Complainant's long corporate history or that Complainant possesses a famous and well-established trade name with associated goodwill.
Respondent contends that the Domain Name is not identical or confusingly similar to Complainant's trademark for the following reasons:
Any similarity between the Domain Name and the trademark is superficial, because no consumer will confuse a large multinational corporation with a small Internet seller, especially after the registrar's lock on the website is lifted and Respondent is permitted to develop its website to make the distinction clear.
Complainant's brand name is primarily associated with cosmetics, not with “hairs” or hair extensions designed to be interwoven with human hair, for which Complainant does not have a strong mark. Respondent says it is a bigger player in the “consumer, retail Revlon hair market than [Complainant] is”.
Thousands of domains other than Complainant's use the Revlon name in order to sell Revlon products. Respondent asserts the “practical silliness” of the argument that the Domain Name may lead to other brands. Respondent planned to build a web space dedicated solely to Revlon hair products for which the Domain Name would be a fair and accurate descriptor.
Internet users are no longer automatically confused by similar sounding names. A search engine queried for information on “Revlon” would not yield Respondent's Domain Name as a result. Other factors like keywords have become more important.
Respondent contends that it does have rights or legitimate interests in respect of the Domain Name. Respondent alleges that, prior to receiving notice of the present dispute, it was, and still is, a bona fide reseller, a retailer, of Revlon products, including hair extensions, relaxer, and hair color. Respondent purchases Revlon products at wholesale and resells them, along with products of many other manufacturers, at its website at “www.ebonyline.com”.
While Respondent does not have a direct relationship with Complainant, it is part of “the many selling channels” of Revlon products. Respondent contends that it intended to create a web page dedicated to sale of Revlon-manufactured products.
Respondent contends that it did not register or use the Domain Name in bad faith. It was engaged in the bona fide sale of Revlon goods when it registered the Domain Name. It is offering the goods at issue for sale on its website at “www.ebonyline.com”.
Respondent says that it planned to use the Domain Name website to sell only Revlon goods. It intended to place a disclaimer on the site that the site was not associated with Complainant.
Respondent denies that it intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Respondent denies that it receives revenue or income from the Registrar and that Respondent even knew of the sponsored results on the parked website.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
Complainant clearly owns the REVLON trademark by reason of Complainant's long term use of the mark and its registration on the Principal Register of the United States and in other countries. Indeed, Respondent does not dispute Complainant's rights in the trademark. The evidence and Respondent's pleading support that REVLON is a well-known mark with respect to beauty care products.
The Domain Name incorporates the REVLON trademark in its entirety, correctly spelled, which prior UDRP panels have held to be sufficient to establish confusing similarity between a domain name and a trademark. Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291; BellSouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013.
In the present case, the addition to the trademark of the descriptive, generic word “hairs” is not sufficient to distinguish the Domain Name from the trademark. As a general principle, the addition of generic or descriptive terms to a trademark does not distinguish the domain name from the trademark and is not sufficient to avoid confusing similarity between the two. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923, (“Generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998)”). The principle is well established in the decisions of prior UDRP panels. See Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. In this case, the descriptor “hairs” relates directly to products manufactured and sold by Complainant and thus tends to enhance rather than diminish the likelihood of confusion. See Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602 (<revloncosmetics.info>, <revlononline.info>, and <revlonstore.info>).
Respondent's countering arguments are not persuasive. In determining whether confusing similarity exists under the Policy, the issue is not whether there is proof of actual user confusion or whether an Internet user, upon reaching a website through the Domain Name could determine that the site was not actually affiliated with or sponsored by the owner of the trademark. The problem and the harm addressed by the Policy is the use of another's trademark to divert the Internet user to a website that is not in fact authorized by, affiliated with, or sponsored by the trademark owner.
The Domain Name and Complainant's REVLON trademark are confusingly similar. This Panel therefore finds Complainant establishes the first element of its case.
Complainant must prove that Respondent does not have rights or legitimate interests in the Domain Name. If a complainant makes a prima facie case, respondent must assume the burden of showing that it does possess such rights or interests.
Here, it is undisputed that Respondent is not contractually or otherwise expressly authorized to use Complainant's REVLON trademark or to register a domain name using the trademark. Respondent nevertheless argues that it lawfully purchases and resells Revlon products at retail on its “www.ebonyline.com” website, which makes it an “authorized reseller.” The essential contested issue, therefore, is whether Respondent is using the Domain Name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Panel identified a number of factors a reseller of another's trademarked goods would have to meet in order to establish that it is making a bona fide offering of goods or services. The first such factor is that respondent must actually be offering the goods or services at issue. Id., citing World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
The second factor is that respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Id., citing Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774.
The third factor is that the site must accurately disclose the registrant's relationship with the trademark owner. Id., citing Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211, among others.
The fourth Oki Data factor is that respondent must not try to corner the market in all domain names. (This factor does not figure in the present case, and the Panel does not discuss it further.)
Subsequent UDRP Panels have referred to the Oki Data decision as the majority view on the subject. Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447. See Ferrari S.P.A., Fila Sport S.P.A. v. Classic Jack, WIPO Case No. D2003-0085; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946. Respondent agrees that most UDRP panels use the Oki Data analysis but contends that Respondent satisfies those criteria. The Panel disagrees.
We take as true Respondent's supported contention that it sells Revlon products, including hair products, at retail on its “www.ebonyline.com” website. However, despite having registered the Domain Name more than two-and-a-half years ago, Respondent is not in fact using the Domain Name to direct the user to a website at which Respondent offers Revlon products for sale. Rather, the Domain Name is used to connect the user to a parked website showing sponsored advertising for various hair care products and services, including Revlon products (but not Revlon products sold by Respondent) and products of Revlon competitors. Respondent thus is not using the Domain Name or the website to which the Domain Name connects to sell the Revlon products Respondent claims it sells as a lawful retailer. The issue here is not whether Respondent can lawfully sell Revlon products at retail somewhere without infringing Complainant's REVLON trademark. The issue under the Policy is whether the Domain Name is being used in connection with a bona fide offering of the Revlon products it claims it has a right to sell, and it clearly is not. Respondent meets neither of the first two Oki Data factors.
Respondent's website also does not accurately disclose the registrant's relationship with the trademark owner and thus fails to satisfy the third Oki Data criterion. Respondent's expressed intent to post an appropriate disclaimer if and when it develops its website is not sufficient to overcome the fact that it has not done so in well over two years. Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211.
Finally, prior UDRP panels have found that a sponsored links page does not constitute a bona fide offering of goods or services. McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No. 1230837.
The Panel concludes that Respondent is not using the Domain Name in connection with a bona fide offering of Revlon products and that Complainant, therefore, has established that Respondent does not have rights or legitimate interests in the Domain Name, the second element of its case.
Complainant must demonstrate bad faith registration and use of the Domain Name.
In this case, Respondent knowingly used Complainant's widely-known trademark, without Complainant's authorization, in registering and using a Domain Name that was clearly intended to exploit Complainant's considerable goodwill in the mark—a Domain Name in which Respondent has not established that it has rights or legitimate interests. Such scenarios have been held sufficient to constitute bad faith registration and use. DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; Google Inc. v. Thilak Raj, Net Jobs, WIPO Case No. D2009-0033; Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071.
The Panel notes that in this case there is at least a plausible legitimate use Respondent might make of the Domain Name, which distinguishes this case to some degree from those cases where there was no connection whatsoever with the trademark owner's goods. The Panel finds, however, that in this case the possibility is far outweighed by the reality that in over two-and-a-half years Respondent's Domain Name has in fact been used to lead to a commercial website that carries advertising for, and links to, goods and services unrelated to Respondent's sale of Revlon products, some of which appear to be competitive with Revlon products. Respondent must bear the responsibility for this. Respondent's assertion that it did not know what the Registrar was doing with Respondent's website is unavailing. The Panel finds that the facts demonstrate a bad faith registration and use of the Domain Name.
Complainant also invokes paragraph 4(b)(iv) of the Policy, which provides that
[B]y using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site . . . by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The question of whether Respondent acted for the purpose of commercial gain comes to the fore here. Respondent denies receiving income or revenues from the advertising on the website, and it is probably not possible in these proceedings for a complainant to prove that a respondent actually earned revenues from a parked web page unless respondent admits the fact.
It is clear from the registration agreement in evidence, however, that the Registrar's page parking service is an optional service for Respondent, that it is contemplated by both Respondent and Registrar that advertising will be placed on the parked page by the Registrar or Respondent or both, including possibly advertising of competing products, and that such advertising is placed with the intent of generating revenues for the Registrar, if not for the registrant. There is clearly a commercial purpose in the free-parked website which purpose benefits improperly from the exploitation of Complainant's trademark, makes Respondent complicit in the harm to Complainant's mark and business, even if Respondent has not earned a share of revenues, and supports a finding of bad faith registration and use of the Domain Name.
The Panel concludes that there was bad faith in the registration and use of the Domain Name and that Complainant has thus proved the third and final element of its case. Whether this case would have concluded differently had Respondent actually done what it says it intended, but then in two-and-a-half years failed to do, is a matter of conjecture at this point rather than of the factual evidence on which the Panel must base its decision.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <revlonhairs.com>, be transferred to Complainant.
John R. Keys, Jr.
Dated: August 3, 2010