WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Jose Gilson de Almeida
Case No. D2010-1189
1. The Parties
Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented internally.
Respondent is Jose Gilson de Almeida of Santana de Parnaiba, São Paulo, Brasil.
2. The Domain Name and Registrar
The disputed domain name is <revlonusa.net> which is registered with Universo Online S/A (UOL).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2010. On July 20, 2010 and August 6, 2010, the Center transmitted by email to Universo Online S/A (UOL) a request for registrar verification in connection with the disputed domain name. On August 6, 2010, Universo Online S/A (UOL) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information. On August 9, 2010, by email the Center requested Universo Online S/A (UOL) to confirm the language of the proceeding. The same day Universo Online S/A (UOL) confirmed that the language of the registration agreement used in registering the disputed domain name was Portuguese. On August 10, 2010, the Center sent an email communication to Complainant, with a copy to Respondent, in both English and Portuguese, providing that the language of the proceeding was Portuguese, and inviting Complainant to submit a signed request that the language of the proceeding be English or a version of the Complaint translated into Portuguese. On the same day Complainant filed a signed request for the language of the proceeding to be English.
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, in both English and Portuguese, and the proceedings commenced on August 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default, in both English and Portuguese, on September 16, 2010.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on September 27, 2010. This Panel finds that it was properly constituted. This 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.
Preliminary Issue, Language
Pursuant to the Registrar, Universo Online S/A (UOL), the language of the registration agreement is in the “brazilian language” which this Panel understands to mean Portuguese. The Complaint was filed in English. Communications from the Center to the parties were in both English and Portuguese. Complainant expressly requested that the language of proceedings be English, asserting, inter alia, that (i) Respondent chose to register a domain name comprised of the term “USA” which is the English abbreviation for United States of America; (ii) the English language comes second only to the Chinese language as the most widely used language in the world; (iii) English is the language of choice for international communications in such varied fields as business; (iv) Revlon is headquartered in an English-speaking country; (v) it would be cumbersome and to Complainant's disadvantage if Complainant was required to translate the Complaint into Portuguese. Respondent did not oppose to Complainant’s request, notwithstanding that the Center communicated to Respondent in both English and Portuguese.
Has Respondent had any interest in the disputed domain name or in this proceeding, Respondent could have requested that communications and the Complaint were in Portuguese, rather than failing to react to the communications the Center sent to Respondent.
Taking into consideration the foregoing and based on paragraph 11(a) of the Rules, this Panel decides that this case be conducted in English1.
4. Factual Background
Complainant is a corporation organized under the laws of Delaware, United States of America, subsidiary of Revlon, Inc., whose stock is publicly traded at the New York Stock Exchange.
Complainant, along with its affiliates, is engaged in the production and sale of cosmetics and beauty products around the world.
Complainant has rights over the REVLON trademark, for which it holds several registrations, including: registration No. 3,035,671 with the United States Patent and Trademark Office, registered in 2005, international class 3, with stated first use in 1932; registration No. 1,886,476 with the United States Patent and Trademark Office, registered in 1995, international classes 9 and 11; registration No. 1,625,545 with the United States Patent and Trademark Office, registered in 1990, international class 3; registration No. 003539822 with the National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial) of Brazil, registered in 1967, class 03.20; registration No. 819170437 with the National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial) of Brazil, registered in 1998, classes 08.10 and 40.
The disputed domain name was created on September 1, 2009.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932.
REVLON is one of the world’s best-known names in cosmetics and beauty care products and is a leading mass-market global cosmetics brand.
Complainant’s products are sold in approximately 175 countries, through wholly-owned subsidiaries in 14 countries and through a large number of distributors and licensees elsewhere around the world.
The REVLON trademark has developed enormous goodwill through more than 75 years of continuous use and hundreds of millions of dollars spent on advertising and promotions around the word. Complainant and its affiliates advertise REVLON products on television, in print, on the Internet, and on point-of-sale materials.
Complainant, or one of its subsidiaries, affiliates, or related companies, currently own more than 2,600 trademark registrations and/or pending applications for trademarks incorporating the REVLON mark worldwide.
Complainant has maintained a presence on the Internet since May 1997, when its own website at ”www.revlon.com“ was officially launched.
Complainant pioneered the use of celebrities in its advertising, featuring prominent actors, singers and models, and has also sponsored numerous television programs and fundraising events.
Complainant, by letter dated April 22, 2010, sent by email to Respondent, requested that Respondent cease and desist from the further use of the disputed domain name. However, Respondent did not answer to that letter and Complainant sent follow-up emails on May 6 and May 17, 2010.
The disputed domain name is confusingly similar to Complainant’s famous trademark REVLON.
“Revlon” is a coined term that was created by its founders over 75 years ago and has no descriptive or generic meaning.
Prior Panels have recognized that the incorporation in a domain name of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainant’s mark.
The addition of geographically descriptive terms to a trademark does not avoid likelihood of confusion. Here, the addition of the geographically descriptive acronym “USA” (meaning U.S.A., the United States of America) to the distinctive and famous REVLON trademark does not negate the likelihood of confusion. Here, adding a geographic location to Complainant’s trademark in the disputed domain name increases the likelihood of confusion, since doing so is a common way to indicate the location of a business.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has no relationship with Complainant and Complainant has not authorized Respondent to use the REVLON trademark. Respondent registered the disputed domain name without Complainant’s authorization.
Respondent had, at a minimum, constructive knowledge of Complainant’s rights because the disputed domain name was registered well after many of Complainant’s trademark registrations issued, including Brazil, the home country of Respondent. Numerous panels have held that where the complainant has valid trademark rights in the trademark comprising the disputed domain name, and where such rights exist in the home country of the registrant, that the principles of constructive notice in that jurisdiction may fairly be applied, and Respondent may be presumed to have notice of the trademark. Given the distinctiveness and international reputation of the REVLON trademark, Respondent has no rights with respect to the disputed domain name.
Respondent has not attempted to demonstrate, and Complainant has not been able to determine that before notice was given to Respondent of this dispute, Respondent used the disputed domain name in connection with a bona fide offering of goods and services; or that has been commonly known by the disputed domain name, even if they had not acquired any trademark or service mark rights; or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Thus Respondent lacks rights or a legitimate interest in the disputed domain name.
Respondent registered and is using the disputed domain name in bath faith.
The inaction, such as passive holding, with respect to a domain name registration can constitute bad faith.
Given the highly distinctive and fanciful nature of the REVLON trademark, it is virtually inconceivable that Respondent chose to register the disputed domain name without being aware of the existence of Complainant’s REVLON trademark. Given the international reputation of the REVLON trademark, Respondent has no rights with respect to the disputed domain name.
Panels have previously held that “the registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use” (Complainant relies on DaimlerChrysler Corporation v. Web4COMM SRL Romania, WIPO Case No. DRO2006-0003).
Further, Respondent has failed to respond to Complainant’s cease and desist letters and has maintained the registration for the disputed domain name over Complainant’s objections. Such silence and ongoing cybersquatting, infringement, and dilution further evidences Respondent’s bad faith.
The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.
Registration together with “inaction” and other facts can constitute bad faith registration and use. Here, there are additional factors: (i) REVLON is a famous trademark internationally; (ii) REVLON is a made-up word with no generic meaning or descriptive meaning; and (iii) Respondent failed to respond to Complainant’s cease and desist, and follow-up letters.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant2. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the REVLON trademark.
The disputed domain name entirely incorporates the REVLON trademark, adding the suffix “usa”; the addition of such term is not enough to avoid similarity, nor does it add anything to avoid confusion. Such suffix might well be understood as a geographic descriptor since it corresponds to the widely-used acronym of “United States of America”. Prior panel decisions have found that the addition of a geographic descriptor does not change the confusing nature of the similarity (Cfr. America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; eBay Inc., v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd., WIPO Case No. D2000-1463; PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s REVLON trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that Complainant’s REVLON trademark is widely-known internationally, and that it is has been in commerce for more than 70 years.
Complainant asserts that it has no relationship with Respondent, and that it has never authorized Respondent to use the REVLON trademark. Likewise, Complainant asserts that Respondent has never been known by the REVLON trademark.
Complainant asserts that the disputed domain name was directed to no active website, and there is no evidence in the file of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which incorporates Complainant’s internationally known REVLON trademark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name3.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Taking into consideration the registration, prolonged use, extensive advertisement and international recognition of the REVLON trademark, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant’s trademark at the time it obtained the registration of the disputed domain name.
Passive holding of a domain name can constitute use in bad faith where, like in this case, there are several factors that in the aggregate lead to no other conclusion4. In this case Complainant’s trademark is very widely-known, as evidenced by its prolongued and international use; Complainant’s trademark has been registered since at least 1967 in Brazil (where Respondent is domiciled as per the Registrar’s report); the creation of the disputed domain name took place more than a year ago without any evidence of its actual or contemplated use by Respondent; Respondent’s failure to respond to Complainant’s cease and desist letter; and Respondent’s failure to appear at this proceeding.
Further, prior panel decisions have found that registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use5.
In light of the above, this Panel finds that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain name <revlonusa.net> be transferred to Complainant.
Dated: October 11, 2010
1 See Auchan v. Oushang Chaoshi, WIPO Case No. D2005-0407: “To rule that the language of the proceeding is Chinese under such circumstances would not serve any useful purpose to either parties and would be unfair to the Complainant as this would cause substantial delay in the proceedings resulting in unnecessary costs incurred on the part of the Complainant”.
2 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.