WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Whois Privacy Services
Pty Ltd, /Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2010-1070
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York, United States of America.
The Respondent is Whois Privacy Services Pte Ltd/Privacy Ltd. Disclosed Agent for YOLAPT of the Isle of Man, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <revlonhairproducts.com> (the "Domain Name") is registered with Fabulous.com Pty Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on 30 June 2010. On July 1, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 13, 2010 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 amended Complaint on July 16, 2010. The Center verified that the amended 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 the Respondent of the Complaint, and the proceedings commenced July 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was 11 August 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Parties of the Respondent’s default on August 13, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 24, 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.
4. Factual Background
The Complainant is the owner of the REVLON trade mark, which has been used by the Complainant continuously in relation to beauty products since 1932. REVLON, which is a coined term based on a combination of the surnames of the founders of the Complainant, and which has no generic or descriptive meaning in any language, is now one of the world's best-known names in cosmetics and beauty care. In 2009, the Complainant generated net sales of USD 1.2959 billion and expended USD 230.5 million on advertising for its REVLON and other brands.
The Complainant is the owner of more than 2,600 trade mark registrations and/or applications for REVLON in 175 countries, including at least 14 in the United States of America, 7 in Australia and 4 in Spain, some of which cover, inter alia, hair care products. The Complainant has maintained a presence on the Internet since May 1997 and has registered at least 200 domain names incorporating its REVLON mark. The REVLON trade mark has been targeted by domain name hi-jackers previously, and the Complainant has successfully recovered 4 domain names incorporating the REVLON mark in four previous WIPO UDRP cases.
The Domain Name was created on July 17, 2005. As at the date of this Complaint, the Domain Name was pointed to a website featuring sponsored links to competitors of the Complainant. The website does not disclose the identity of the Respondent or the true operator of the website, nor their connection (or lack thereof) with the Complainant.
The Complainant sent the Respondent a letter via email on April 15, 2010 requesting that the Respondent cease and desist from the use of the Domain Name. The Complaint did not receive a response and follow up letters were sent on April 26, 2010 and May 6, 2010, respectively.
On May 25, 2010, the Respondent through its legal representative responded to the Complainant and subsequently engaged in further email correspondence with the Complainant on June 18 and 22, 2010 concerning the Domain Name. In the course of this email correspondence the Complainant offered to reimburse the Respondent USD 200 for the Respondent's registration fees and reasonable documented expenses. The Complainant did not submit as evidence the emails claimed to have been received by the Respondent's legal representative for reasons of privilege and it is therefore unclear whether the Respondent rejected this offer (although this is implied in the Complainant's submissions).
It is apparent from searches conducted by the Complainant on the WhoIs database that the registrant information for the Domain Name was updated on June 20, 2010.
5. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
(a) the Domain Name is confusingly similar to the Complainant's REVLON trade mark;
(b) the Complainant has not authorised the Respondent to use the REVLON trade mark and the Respondent otherwise has no relationship with the Complainant;
(c) the Respondent must be presumed to have been aware of the Complainant and the Complainant's rights in the REVLON trade mark at the time of registering, and during the period of use of, the Domain Name;
(d) the Respondent had constructive knowledge of the Complainant's rights in the REVLON trade mark by virtue of the Complainant's (numerous) trade mark registrations;
(e) the Respondent was in any case put on notice of the Complainant's rights in the Domain Name through the cease and desist letter and subsequent communications detailed in paragraph 4 above;
(f) the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services;
(g) the fame of the Complainant's REVLON trade mark creates a presumption that the Respondent registered the Domain Name in order to attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's REVLON trade mark as to the source, sponsorship affiliation or endorsement of the website;
(h) the Complainant's REVLON trade mark is a coined term with no generic or descriptive meaning and as such it is almost inconceivable that the Respondent came up with the Domain Name independently;
(i) the Respondent has not been commonly known by the Domain Name nor has the Respondent acquired any trade mark or service mark rights in the Domain Name;
(j) the Respondent has obtained commercial gain in the form of click through revenue by pointing the Domain Name to a website featuring links to the Complainant's competitors; and
(k) the Respondent took steps to disguise its identity during the email communications with the Complainant detailed in paragraph 4 above.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to 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 Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.
(i) Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the REVLON trade mark on the basis of the numerous trade mark registrations owned by the Complainant for REVLON, and based on the Complainant's reputation in the REVLON trade mark as evidenced, among other things, by the Complainant's sales revenue and advertising expenditure.
The Complainant has indicated that it has valid trademark rights in the United Kingdom, which would appear to be the proper location for the registration of trademarks covering the geographic location of the Isle of Man. The Panel notes, however, that it is not necessary for the Complainant to have registered its mark specifically in the country where the Respondent is located; rather, for a gTLD, a valid corresponding trade mark registration in any country will suffice. See The Royal Bank of Scotland Group plc & National Westminster Bank plc v. Nikita Soloviov, NAF Claim No. 787983. The Panel notes in any case that the Complainant has registered its REVLON trade mark, inter alia, in each of Australia (where the registrant privacy service initially shown in the WhoIs records was recorded as being located at the filing of this Complaint), Spain (where the Respondent's legal purported representative is located) and in the United States (where the Complainant's headquarters are located).
The Panel accepts that the Domain Name is confusingly similar to the Complainant's REVLON trade mark. The Domain Name incorporates REVLON in its entirety together with the words "hair products". The distinctive and prominent element of the Domain Name is clearly REVLON, and the additional words "hair products" are generic and do not serve either to distinguish the Domain Name from the Complainant’s REVLON trade mark or negate the confusing similarity between the Domain Name and the Complainant's REVLON mark. To the contrary, the Panel accepts that the addition of the words "hair products" to REVLON to form the Domain Name serves to increase the likelihood of confusion given that hair products are clearly relevant to the Complainant's business. See LEGO Juris A/S v. huangderong, WIPO Case No. D2009-1325.
The Panel accordingly finds that the Domain Name is confusingly similar to the mark REVLON in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
(ii) Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Domain Name. Therefore, the Panel will assess the Respondent's rights in the Domain Name (or lack thereof) based on the Respondent's use of the Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the REVLON trade mark and that there is otherwise no connection between the Complainant and the Respondent. The Panel further accepts that the Respondent has not become commonly known by the Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate rights in the Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Domain Name for a legitimate noncommercial purpose or in connection with a bona fide offering of goods or services.
The Domain Name points to a website which features sponsored links and click-through advertising. The Panel assumes that the Respondent profits from the advertisement and promotion of these third party goods and services. The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a legitimate offering of goods or services (See PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, supra). The Panel considers this to be particularly the case in circumstances where the sponsored links are to competitors of the Complainant.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Domain Name.
(iii) Registered and Used in Bad Faith
Evidence of bad faith includes actual or constructive notice of a well known trade mark at the time of registration of a domain name by a respondent. See Samsonite Corp. v. Colony Holding, NAF Claim No. 94313.
In the absence of any evidence submitted by the Complainant of any trade mark registrations for REVLON in the jurisdiction where the Respondent is located, i.e., the Isle of Man, the Panel considers that it would be inappropriate to apply the principle of constructive knowledge to infer that the Respondent was aware of the Complainant's rights in the REVLON trade mark.
However, the Panel considers that the Complainant's REVLON trade mark is sufficiently well-known in relation to beauty and hair care products internationally, that it must be inferred that the Respondent was aware of the REVLON trade mark, and of the Complainant's rights in the Domain Name, at the time of registration of the Domain Name.
Given the fame of the Complainant's REVLON trade mark, the Panel accepts that the Respondent has registered and used the Domain Name solely for the purpose of capitalising on the Complainant's reputation and goodwill to generate profits, not only by attracting to the website customers who the Panel accepts would be drawn to the website on the mistaken assumption that the website was authorised by or connected with the Complainant, but by then redirecting those customers to competitors of the Complainant. See Control Techniques Ltd. v. Lektronix Ltd., WIPO Case No. D2006-1052; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Domain Name in any manner or for any purpose otherwise then in bad faith.
The Panel is also persuaded by the Respondent's use of a WhoIs privacy shield to conceal the Respondent's identity (as well as the fact that the details of the registrant changed right around the time to the filing of this Complaint after the Complainant had made contact with the registrant in an attempt to settle the dispute), which the Panel considers further supports the Panel's finding that the Respondent has registered and used the Domain Name in bad faith.
The Panel therefore finds that the Respondent has registered and used the Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
In reaching this conclusion, the Panel notes that it has not drawn any inferences from the communications between the Complainant and the Respondent's legal representative regarding any possible offer by the Respondent to sell the Domain Name as the communications emanating from the Respondent were not submitted as evidence nor sighted by the Panel.
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 <revlonhairproducts.com> be transferred to the Complainant.
Dated: September 6, 2010