World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2010-1339

1. The Parties

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

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

2. The Domain Name and Registrar

2.1 The disputed domain name <revloncolorstay.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2010. On August 9, 2010, the Center transmitted by email to Directi Internet Solutions Pvt.Ltd.d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On August 11, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

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 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2010.

3.4 The Center received an email communication from the Respondent on September 2, 2010. On September 3, 2010, the Center acknowledged receipt of the Respondent’ email communication and noting its content, informed the Parties about suspension. By its email of September 3, 2010, the Complainant indicated that it will not be filing a request for suspension and sought the continuation of the administrative proceeding.

3.5 The Center appointed Ike Ehiribe as the sole panelist in this matter on September 7, 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 in New York, United States of America (USA). The Complainant and its affiliates own the widely-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 1.2959 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 COLORSTAY and REVLON COLORSTAY trademarks for cosmetics and other beauty care related products which are sold in numerous countries including in the United States of America, the European Union, Singapore and India. The COLORSTAY and REVLON COLORSTAY trademarks are registered around the world in various international classes including in the European Union and Singapore where the Respondent maintains contact addresses, and have been in use for well over 15 years.

4.2 The Respondent registered the disputed domain name on July 22, 2010 according to the Registrar’s WhoIs database. The Respondent’s website to which the disputed domain name resolves reflects 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 to these proceedings. However, in an email dated September 2, 2010, the Respondent indicated that he was willing to transfer the disputed domain name but sought compensation for half the amount he had invested, which he claimed was USD 2000.

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 certificates issued in the United States of America one (1) Community Trade Mark certificate and one (1) Singapore Certificate of Trade mark registration. The Complainant states that it has attached the Community Trade Mark certificate and the Singapore Trade Mark certificate because the WhoIs database reveals contact information for the Respondent in both the Netherlands and Singapore.

5.2 The Complainant states further that the Complaint is also based upon the trademarks COLORSTAY and REVLON COLORSTAY which are registered around the world and for a variety of goods in various international classes and have been in use for over 15 years. In this regard, the Complainant refers to: (i) three (3) United States Trademark Registration certificates; (ii) one (1) Community Trade Mark for the trademark COLORSTAY; and (iii) one (1) Singapore Certificate of Trade Mark registration for the trademark REVLON COLORSTAY. Again the Community trademark certificate and the Singapore Certificates are attached because the WhoIs database discloses contact details for the Respondent in the Netherlands and Singapore respectively. The Complainant states that it has maintained a presence on the Internet since May 2007 when its own website at “www.revlon.com” was launched. The Complainant also asserts that the REVLON trademark is its most valuable asset, thus trademark protection is very important to its business. The Complainant states that at the moment, it currently owns 50 United States trademark registrations and or pending applications for trademarks incorporating the REVLON trademark and more than 2,600 trademark registrations and or pending applications for trademarks incorporating the REVLON mark worldwide.

5.3 The Complainant contends therefore that the disputed domain name <revloncolorstay.org> is both confusingly similar and identical to the Complainant’s registered trademarks, primarily because the disputed domain name wholly incorporates the REVLON, COLORSTAY and REVLON COLORSTAY trademarks. The Complainant further argues that the addition of the phrase “org” to the disputed domain name does not prevent likely confusion in the minds of Internet visitors as the phrase “org” is simply a non-distinctive generic top-level domain (gTLD) designation for the registration of a domain name. The Complainant in this regard, relies on a number of decided cases including Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013 and Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0912.

5.4 The Complainant contends that inserting the combination of two trademarks owned by the Complainant into the disputed domain name, such as the Respondent has done in this case, does not distinguish the disputed domain name from the Complainant’s trademarks. The Complainant submits that a domain name which consists of the combination of two trademarks must be considered to be confusingly similar to such trademarks owned by the Complainant under the UDRP. In this regard, the Complainant relies on a number of UDRP decisions including Intuit, Inc. v. Pioneer Enterprises Ltd., WIPO Case No. D2009-1439 and Société Air France v. Domain Park Limited, WIPO Case No. D2007-0818.

5.5 The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name 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 actual and or constructive knowledge of the Complainant’s trade mark rights because the registration of the disputed domain name took place well after the Complainant’s trademark registrations; that is to say on July 22, 2010. Secondly the Complainant’s trademark rights are known to exist in the home country of the Respondent be it the Netherlands or Singapore. In support of this contention, the Complainant relies on Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.

5.6 The Complainant further refers to the international reputation of the REVLON, COLORSTAY and REVLON COLORSTAY trademarks to assert that the Respondent has no rights with respect to the disputed domain name, in support of this contention the Complainant relies on a number of UDRP decisions including Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291; Beiersdorf AG v. Good Deal Communications, WIPO Case No. D2000-1759 and Revlon v.IONE Inc., WIPO Case No. D2010-1000, where the respective panels in those cases relied on the international reputation of the REVLON trademark to order the transfer of the disputed domain names to Revlon.

5.7 The Complainant finally submits that the Respondent’s use of the disputed domain name which in essence resolves to a website that features 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 name as is 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 decisions including Mclaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No. 1230837.

5.8 With regard to registration and use in bad faith, the Complainant submits that the Respondent registered and is using the disputed domain name 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 Registrant 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, COLORSTAY and REVLON COLORSTAY trademarks the Respondent must have registered the disputed domain name despite being aware of the prior existence of the Complainant’s trademarks as the Complainant had sent previous correspondence to the Respondent relating to other disputed domain names on June 29 2010 prior to the Respondent registering the disputed domain name in this case on July 22, 2010; (c) panels have previously held that the mere 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, COLORSTAY and REVLON COLORSTAY trademarks in the disputed domain name to redirect Internet traffic intended for the Complainant for commercial gain; (e) the Respondent offered to sell the disputed domain name, along with other domain names to the Complainant for an excessive and unreasonable sum of USD 10,000 instead of transferring the disputed domain name to the Complainant; (f) by reason of the Respondent’s registration of the disputed domain name the Complainant who owns the trademarks has been prevented from reflecting the trademark in corresponding domain names; and (g) the Respondent is currently named in pending UDRP proceedings concerning the domain name <revlonlipstick.net> and has previously admitted in correspondence that he is the owner of the domain names <revlonlipstick.com> and <revlonlipstick.net> which are both also subject to ongoing UDRP proceedings.

B. Respondent

5.9 The Respondent did not reply to the Complainant’s contentions and is in default. 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.

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 name is 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 name; (iii) and that the disputed domain name has been registered and is 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 name, namely, <revloncolorstay.org>, is confusingly similar to the widely- known REVLON, COLORSTAY and REVLON COLORSTAY trademarks owned exclusively by the Complainant and its affiliates. Upon a studied comparison of the disputed domain name and the Complainant’s trademark it is patently obvious that the disputed domain name wholly incorporates the Complainant’s REVLON COLORSTAY trademark. This Panel is satisfied, as the Complainant contends, that the addition of a generic top-level domain (gTLD) designation such as “org”, does not in any way sufficiently distinguish the disputed domain name from the Complainant’s trademarks 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 combination of two trademarks owned by the Complainant as placed in the disputed domain name does not prevent confusion in the minds of Internet visitors and as the Complainant submits, such a domain name must be found to be confusingly similar to the Complainant’s trademarks.

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 Revlon Consumer Products Corporation v. Domain Manager, Page UP Communications, WIPO Case No. D2003 -0602 where the panel, in similar circumstances as arising in this case, ordered the transfer of a number of domain names found to be confusingly similar to the Complainant’s trademark, namely, <revloncosmetics.info>, <revlonline.info> and <revlonstore.info>; and Revlon Consumer Products Corporation. v. IONE Inc.,supra, where the panel ordered the transfer of the disputed domain dame, <revlonhairs.com> again to the Complainant. See also Revlon Consumer Products Corporation v. Intranzition Services Inc., WIPO Case No. D2010-1190 where the disputed domain name <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 name is confusingly similar to the Complainant’s trademarks in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.6 The Panel finds that the Respondent has failed to provide any evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed domain name within the ambit of paragraph 4(c) of the Policy. There is undoubtedly a distinct 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 is also satisfied that since the disputed domain name points to a website that feature sponsored links to websites of competitors of the Complainant or other third party websites, the Respondent has failed to adhere to the stipulated requirements necessary to establish the bona fide offering of goods and services as pronounced in the case of Oki Data Americas Inc v. ASD Inc., WIPO Case No. D2001-0903, and contrary to 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 name 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 v. BWI Domains c/o Domain Manager, supra is 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 disputed domain name 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 name in accordance with paragraph 4(a)(ii) of the Policy and that 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 name in bad faith, with the sole aim of using the disputed domain name 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, COLORSTAY and REVLONCOLORSTAY trademarks and 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, a large number of distributors and licensees. The Respondent defiantly elected to register the disputed domain name on July 22, 2010 after receiving correspondence from the Complainant regarding other disputed domain names infringing the Complainant’s trademarks. In this regard therefore, the Complainant is absolutely correct to assert that the Respondent cannot feign ignorance of the existence of widely-known exclusive trademark rights owned and exercised by the Complainant and its affiliates. Second, the Panel has taken into account the Respondent’s excessive demand for the payment of the sum of USD 10,000.00 from the Complainant and the continuous refusal to transfer the disputed domain name 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 Morel, WIPO Case No. D2002-0215 where the respondent in that case demanded the sum of USD 1000 before considering the transfer of the disputed domain name <revlongirls.com> which conduct the panel ultimately found to be further evidence of bad faith registration and use. Third, the Panel finds that the resultant effect of the Respondent being named in other pending UDRP proceedings and the Respondent’s admission in previous correspondence that he is also the registered owner of the domain names <revlonlipstick.com> and <revlonlipstick.net> is that it undoubtedly establishes the Respondent’s pattern of conduct which further demonstrates intentional bad faith use on the part of the Respondent. Again, the Panel relies on the decision of Revlon Consumer Products v. Domain Manager, PageUp Communications, supra, where the panel ordered the transfer of a number of disputed domain names to the Complainant namely: <revloncosmetics.info>; <revlononline.info> and <revlonstore.info> from a 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 registration and use 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 name <revloncolorstay.org> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Dated: September 21, 2010

 

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