World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation v. PrivacyProtect.org / Naga Prasad

Case No. D2010-1250

1. The Parties

1.1 The Complainant is Revlon Consumer Products Corporation of United States of America, internally represented (the “Complainant”) .

1.2 The Respondent is PrivacyProtect.org of the Netherlands / Naga Prasad of Singapore (collectively the “Respondent”).

2. The Domain Names and Registrar

2.1 The disputed domain names <revlonlipstick.com>, <revlonlipstick.net>, and <revlonlipstick.org> (the “disputed Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

3.1 The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010 regarding the domain name <revlonlipstick.com>. The Complainant submitted the first amended Complaint in response to the Center’s email of August 3, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The original Complaint and first amended Complaint were formally notified to the Respondent, and the proceedings commenced on August 6, 2010. On August 10, 2010, the Complainant submitted the second amended Complaint seeking to add two disputed Domain Names <revlonlipstick.net> and <revlonlipstick.org>. On August 16, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names <revlonlipstick.net> and <revlonlipstick.org>. On August 17, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant for the domain names and providing the contact details.

3.2 The Center verified that the second 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”).

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 07, 2010. The Respondent submitted an email in lieu of a Response on September 8, 2010 in addition to two email communications of August 3 and 4, 2010.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on September 21, 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

4.1 The Complainant is Revlon Consumer Products Corporation, whose principal place of business is New York, New York, United States of America. The Complainant and its affiliates own the well-known REVLON trademark which is registered around the world for cosmetics and related beauty care products and has been in use for over 75 years. The Complainant sells Revlon products in approximately 175 countries through wholly owned subsidiaries in 14 countries and through a large number of distributors and licensees. The Complainant’s net sales for 2009 were in the sum of USD 1,295 billion. The Complainant’s parent company Revlon Inc. is also a publicly traded company listed on the New York Stock Exchange and is frequently referenced in financial and business publications and websites. Furthermore, the Complainant and a number of its affiliates around the world are owners of the REVLON trademark for cosmetics and other beauty care related products which are sold in numerous countries including in the United States, the European Union and Singapore. The REVLON trademark is registered around the world in various international classes including in Singapore and the Netherlands (in the European Union) where the Respondent maintains contact addresses. It is also stated that one of the products that the Complainant is well-known for is lipstick which the Complainant continues to innovate with international launches under the REVLON trademark.

4.2 The disputed Domain Names <revlonlipstick.net>, <revlonlipstick.com>, and<revlonlipstick.org> were registered on March 1, 2010 according to the Registrar’s WhoIs database. As at July 27, 2010, each of the Respondent’s infringing websites featured sponsored links to third-party websites selling both the Complainant’s products and products of competitors of the Complainant. The Respondent did not file a Response in these proceedings. However, in the emails dated August 3, 2010 and August 4, 2010, the Respondent demanded the sum of USD 5,000 from the Complainant for each of the three disputed Domain Names and a further sum of USD 5,000 to cover fees allegedly paid to a consultant. In another email of August 6, 2010, the Respondent advised the Complainant that he was the registrant of the three disputed Domain Names and another domain name <revloncolorstay.org>. Although the Respondent’s websites at the disputed Domain Names had been modified to no longer include any active content as at August 9, 2010, the Respondent contacted the Complainant again on August 13, 2010 regarding his offer to sell the disputed Domain Names to the Complainant.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that this Complaint is based upon the famous trademark REVLON which is registered around the world for a variety of goods in various international classes and has been in use for over 75 years. In this regard the Complainant relies on: (i) fourteen 14 trademark registration certificates issued in the United States, one Community Trade Mark registration certificate and one Singapore trademark registration certificate. The Complainant states that it has attached the Community trademark registration certificate and the Singapore trademark registration certificate because the WhoIs database reveals the Respondent’s contact information in both the Netherlands and Singapore.

5.2 The Complainant states further that it has maintained a presence on the Internet since May 1997 when its own website at “www.revlon.com” was launched. The Complainant also asserts that the REVLON trademark is its most valuable asset, and thus trademark protection is very important to its business. The Complainant states that it currently owns more than six hundred and fifty (650) domain name registrations worldwide and more than three hundred and fifty (350) of these domain names incorporate the REVLON trademark or variation thereof. The Complainant states that it currently owns 50 United States trademark registrations and or pending applications for trademarks incorporating REVLON and more than 2,600 trademark registrations and or pending applications for trademarks incorporating REVLON worldwide.

5.3 The Complainant contends therefore that the disputed Domain Names <revlonlipstick.net>, <revlonlipstick.com> and <revlonlipstick.org> are both confusingly similar and identical to the Complainant’s registered trademarks, primarily because the disputed Domain Names wholly incorporate the Complainant’s REVLON trademark. The Complainant further argues that the addition of the suffixes “.net”, “.com” or “.org” to the disputed Domain Names does not prevent likely confusion in the minds of Internet visitors as those suffixes are simply non-distinctive generic top-level domain (gTLD) designations for the registration of domain names. The Complainant, in this regard, relies on a number of decided cases including the cases of BellSouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013 and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.

5.4 The Complainant contends that the addition of a descriptive or generic term to a trademark, as the Respondent has done in this case, does not distinguish the disputed Domain Names from the Complainant’s trademarks. The Complainant submits that the addition of the generic word “lipstick” to the distinctive and famous REVLON trademark does not prevent the likelihood of confusion but instead adds to it because the Complainant manufactures and sells lipstick. In this regard, the Complainant relies on a number of cases including Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000 and Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602.

5.5 The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names in that the Respondent has no relationship with the Complainant and that the Complainant has not authorized the Respondent to use any of the Complainant’s trademarks. The Complainant submits further that the Respondent must have had constructive knowledge of the Complainant’s trademark rights because the registration of the disputed Domain Names took place well after the Complainant’s trademark registrations, i.e., on March 2, 2010. Secondly, the Complainant’s trademark rights are known to exist in the countries where the Respondent is located, i.e., the Netherlands and Singapore. In support of this contention the Complainant relies on the case of Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.

5.6 The Complainant further refers to the international reputation of the REVLON trademark to assert that the Respondent has no rights with respect to the disputed Domain Names. In support of this contention the Complainant relies on a number of cases including the cases of Revlon v. Brandy Farris, Beiersdorf AG v. Good Deal Communications, WIPO Case No. D2000-1759 and Revlon v. IONE Inc., supra, where the respective panels based on the international reputation of the REVLON trademark ordered transfer of the domain names at issue to the Complainant.

5.7 The Complainant finally submits that the Respondent’s use of the disputed Domain Names which in essence featured sponsored links to websites of competitors of the Complainant and third party websites that sell products of the competitors of the Complainant does not constitute a bona fide offering of goods and services as required by paragraph 4(c)(i) of the Policy; nor is there any indication or demonstration from the Respondent that the Respondent is commonly known by the disputed Domain Names as required by paragraph 4(c)(ii) of the Policy; nor is there any evidence of legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. In this regard the Complainant relies on a number of cases including McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No. FA 1230837.

5.8 With regards to registration and use in bad faith, the Complainant submits that the Respondent registered and is using the disputed Domain Names in bad faith for the following reasons: (a) such registration and use as carried out by the Respondent is in violation of section 12 of the Registrar’s Registration Agreement which enjoins the Respondent to ensure that the registration and use of domain names does not infringe upon the intellectual property rights or other rights of any person or entity; (b) in the light of the highly distinctive and fanciful nature of the REVLON trademark the Respondent must have registered the disputed Domain Names despite being aware of the prior existence of the Complainant’s trademarks having registered the disputed Domain Names on March 2, 2010; (c) UDRP panels have previously held that the registration and use of domain names which infringes famous trademarks belonging to others without proving any rights or legitimate interests in it represents bad faith registration and use; (d) the Respondent is using the REVLON trademark in the disputed Domain Names to redirect Internet traffic intended for the Complainant for commercial gain; (e) the Respondent offered to sell the disputed Domain Names to the Complainant several times first for the sum of USD 20,000 and later on for the sum of USD 10,000; (f) by reason of the Respondent’s registration of the disputed Domain Names the Complainant who owns the trademarks has been prevented from reflecting the trademark in corresponding domain names; (g) the Respondent is currently named in other UDRP proceedings concerning the domain name <revloncolorstay.org> and has admitted in correspondence to the Respondent that he is the owner of the disputed Domain Names <revlonlipstick.com>, <revlonlipstick.org> and <revlonlipstick.net>; and (h) the Respondent only deleted the infringing websites after the filing of the Complaint.

B. Respondent

5.9 The Respondent did not reply to the Complainant’s contentions and is in default save forwarding emails dated August 3, August 4 and August 6, 2010, respectively, advising that the infringing websites had been deleted, demanding payment of various amounts from the Complainant and advising that he is the owner of the disputed Domain Names. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default and emails sent to the Complainant.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names; (iii) and that the disputed Domain Names have been registered and are being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds on the facts as recounted by the Complainant and unchallenged by the Respondent that the disputed Domain Names, namely, <revlonlipstick.net>, <revlonlipstick.org> and <revlonlipstick.com> are confusingly similar to the well-known worldwide REVLON trademark owned exclusively by the Complainant and its affiliates. Upon a studied comparison of the disputed Domain Names and the Complainant’s trademark it is patently obvious that the disputed Domain Names wholly incorporates the Complainant’s REVLON trademark. This Panel is satisfied, as the Complainant contends, that the addition of generic top-level domain (gTLD) designations such as “.org”, “.com” or “.net”, does not in any way sufficiently distinguish the disputed Domain Names from the Complainant’s trademark and equally, do not prevent the likelihood of confusion in the minds of Internet visitors. In the same vein, the Panel is equally satisfied that the addition of the generic word “lipstick” to the distinctive and well-known REVLON trademark owned by the Complainant does not prevent confusion in the minds of Internet visitors

6.4 The Panel in arriving at these findings in paragraph 6.3 above, draws support from a number of decided cases cited by the Complainant, in particular the case of Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, supra, where the panel, in similar circumstances as arising in this case, ordered transfer of the domain names at issue found to be confusingly similar to the Complainant’s trademark, namely, <revloncosmetics.info>, <revlononline.info> and <revlonstore.info>. Also the case of Revlon Consumer Products Corporation v. IONE Inc., supra, where the panel ordered transfer of the domain name at issue <revlonhairs.com> to the Complainant. See also Revlon Consumer Products Corporation v. Intranzition Services Inc, WIPO Case No. D2010-1190 where the domain name at issue <revlonoutlet.com> was ordered to be transferred to the Complainant.

6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Names are confusingly similar to the Complainant’s REVLON trademark in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.6 Once a complainant shows a prima facie case that a respondent lacks rights or legitimate interests in the domain name at issue, the burden of rebuttal passes to the respondent. The Complainant in this proceeding has provided prima facie evidence that the Respondent has no rights or legitimate interests in the disputed Domain Names. The Panel on the current record before it finds that the Respondent has failed to rebut the prima facie case as there is undoubtedly a lack of evidence of any relationship between the Complainant and the Respondent or evidence of consent or any license issued to the Respondent. The Panel also finds that since the disputed Domain Names resolved to websites that feature sponsored links to websites of competitors of the Complainant or other third party websites, the Respondent’s use of the disputed Domain Names is not a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy.

6.7 In addition, the Panel is satisfied as the Complainant submits that the Respondent has failed to show that it is commonly known by the disputed Domain Names contrary to paragraph 4 (c)(ii) of the Policy or that there is any evidence of legitimate noncommercial or fair use contrary to paragraph 4(c)(iii) of the Policy. The Panel finds that the Complainant’s reliance on the case of McLaughlin Gormley King Company, supra, is most relevant in the circumstances of this case, as the panel in that case, held inter alia that in so far as it is the Complainant’s trademark that clearly attracts and diverts the attention of Internet visitors to other websites the use of the domain names at issue cannot represent a legitimate noncommercial or fair use under the Policy.

6.8 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Names in accordance with paragraph 4(a)(ii) of the Policy and that the Respondent has not come forward to refute or challenge the Complainant’s evidence.

C. Registered and Used in Bad Faith

6.9 On the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Names in bad faith, with the sole aim of using the disputed Domain Names in bad faith. The Panel has taken a number factors unchallenged by the Respondent into account in arriving at this conclusion. First of all, the Panel finds that the Respondent knew or ought to have known of the Complainant’s worldwide exclusive rights in the REVLON trademark considering that the sale of the Complainant’s products in approximately 175 countries including in the Netherlands and in Singapore where the Respondent is based, through wholly owned subsidiaries and a large number of distributors and licensees. In the Panel’s view, the Respondent, despite this apparent knowledge, deliberately chose to register the disputed Domain Names to take advantage of the fame of the Complainant’s mark. Therefore, the Panel agrees with the Complainant’s assertion that the Respondent cannot feign ignorance of the existence of the well-known trademark and the exclusive rights owned and exercised by the Complainant and its affiliates. Second, the Panel has taken into account the Respondent’s unreasonable demand for the payment of the sum of USD 20,000 and latterly USD 10,000 from the Complainant and continuous refusal to transfer the disputed Domain Names as further evidence of bad faith registration and use. In this regard, reliance is placed on the case of Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215 where the respondent demanded the sum of USD 1,000 for transferring the domain name at issue <revlongirls.com>, and the panel found that to be further evidence of bad faith registration and use. Third, the Panel finds that the Respondent’s registration of three disputed Domain Names and another domain name <revloncolorstay.org> (the Respondent is the respondent in other UDRP proceeding with regard to this domain name) constitutes a pattern of conduct that prevents the Complainant from reflecting the REVLON mark in a corresponding domain name and such conduct demonstrates further evidence of bad faith use on the part of the Respondent. Again the Panel relies on the decision of Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, supra, where the panel ordered the domain names at issue to be transferred to the Complainant namely <revloncosmetics.info>, <revlononline.info> and <revlonstore.info> from the respondent who engaged in multiple registration of infringing domain names.

6.10 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4 (b)(iv) of the Policy.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Names <revlonlipstick.net>, <revlonlipstick.org> and <revlonlipstick.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Dated: October 11, 2010.

 

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