World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, David Smith

Case No. D2010-1497

1. The Parties

Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, internally represented.

Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia and Host Master, Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and David Smith.

2. The Domain Name and Registrar

The disputed domain name <revlonrun.com> (the “Domain Name”) is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010 regarding the domain names <revlonrun.com> and <revlonrunwlk.com>. On September 8, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the domain names <revlonrun.com> and <revlonrunwlk.com>. On September 9, 2010, Above.com, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name <revlonrun.com> which differed from the named Respondent and contact information in the Complaint and informing that the domain name <revlonrunwlk.com> is in redemption period. The Center sent an email communication to Complainant on September 13, 2010, providing the registrant and contact information disclosed by Above.com, Inc. and inviting Complainant to submit an amendment to the Complaint. The Center also advised Complainant on September 14, 2010 that the domain name <revlonrunwlk.com> was in redemption period. Complainant filed the first amendment to the Complaint on September 13, 2010 to add Host Master, Transure Enterprise Ltd as Respondent and another amendment to the Complaint on September 22, 2010 to delete the domain name <revlonrunwlk.com> from the Complaint.

The Center verified that the Complaint together with the amendments to 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 September 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2010.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 22, 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

Complainant’s company produces cosmetics and related beauty care products.

Complainant is, inter alia, the proprietor of various REVLON trademarks registered in the United States and its affiliate is, inter alia, the proprietor of various REVLON trademarks registered in Australia and the Virgin Islands.

The Domain Name was registered on June 19, 2009. The Domain Name at the time of the Decision directed to a website, which contains links to competitors of Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to its REVLON trademarks.

Complainant claims 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 its REVLON trademarks. The use of the Domain Name for a sponsored links page, does not constitute a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use.

Complainant asserts that the Domain Name is registered and is being used in bad faith because Respondent was aware of Complainant’s trademark. Furthermore, the Domain Name directs to a website, which directs Internet users to, inter alia, websites of competitors of Complainant. Respondent thereby misappropriates Complainant’s goodwill. Respondent David Smith also offered to sell the Domain Name to Complainant for USD 500, which Complainant finds unreasonable and excessive.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Multiple Respondents

According to the registrar Above.com, Inc.’s WhoIs-database for the Domain Name, Respondent is Above.com Domain Privacy. The initial Complaint was brought against Above.com Domain Privacy and David Smith. After Above.com, Inc. had disclosed the underlying registrant of the Domain Name, the Center allowed Complainant to amend the Complaint, upon which Host Master, Transure Enterprise Ltd was added as Respondent. In principle, therefore, Host Master, Transure Enterprise Ltd would be the correct Respondent. However, as is evidenced by many decisions (see The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057; Research In Motion Limited v. PrivacyProtect.org/Pluto Domain Services Private Limited, WIPO Case No. D2009-0324; RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894), privacy services such as Above.com Domain Privacy are often used by cybersquatters to hide their identity. In order to maintain the effectiveness of the UDRP procedure, several panels have taken a pragmatic approach by allowing a complaint to be brought against a privacy service and the underlying registrant (see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and cases referred herein). In that manner there is reasonable certainty that no decision implementation issues will arise after the notification of a decision. This Panel concurs with that view and therefore allows the Complaint against all Respondents.

B. Identical or Confusingly Similar

Complainant has shown that it has rights in the REVLON trademarks.

The element “revlon” is to be considered the dominant part of the Domain Name, while the word “run” is generic. The use of descriptive or generic words in addition to a trademark in a domain name can generally not prevent the domain name from being confusingly similar under the Policy. The descriptive and generic elements do not take away the overall impression the dominant part of the domain name, being the trademark, makes on the public (see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, F. Hoffmann-La Roche AG v. Rudiger Meissner, WIPO Case No. D2009-1127 and Dr. Ing. h.c. F. Porsche v. Bv berry smits trading co, WIPO Case No. DNL2009-0049).

Therefore, the Panel concludes that the Domain Name is confusingly similar to Complainant’s trademark.

C. Rights or Legitimate Interests

Complainant claims that Respondent has no right to or legitimate interest in the Domain Name. Complainant has not authorized Respondent to use the Domain Name.

Furthermore, there is no evidence that Respondent was commonly known by the Domain Name.

The Panel finds that Complainant’s trademark is a coined term that has no generic or descriptive meaning, while the Domain Name at the time of the Decision resolved to a pay-per-click parking page which offers links to, inter alia, websites on which goods and services of Complainant’s competitors are offered for sale. It is well established that parking pages built around a trademark (as contrasted with pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate noncommercial or fair use (see mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340; Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598).

As Respondent has failed to file a Response, it has not provided any evidence on its behalf. The Panel therefore concludes that Respondent has no right or legitimate interest in the Domain Name.

D. Registered and Used in Bad Faith

The registrations of the REVLON trademarks on which Complainant relies predate the Domain Name registration by several years. The Panel deems it likely that Respondent was aware of Complainant’s trademarks when registering the Domain Name.

On the basis of the evidence provided in this case, the Panel is satisfied that the trademarks of Complainant have a strong reputation and are well-known. The Panel also notes that the website at the Domain Name at the time of the Decision provided links to the Revlon products and Complainant’s competitors, which shows Respondent’s apparent knowledge of Complainant. In addition, a simple trademark registration search would have informed Respondent of the existence of Complainant’s trademarks, while the first four results of a Google search on “revlonrun”, as carried out by the Panel, refer to the domain name <revlonrunwalk.org> and <revlonrunwalk.com>, which direct to websites for the “EIF Revlon Run/Walk for Women”, an event sponsored by, inter alia, Complainant. Therefore, even if Respondent had not actually been aware of Complainant’s rights, a small effort on its part would have revealed those rights. If Respondent has not made that effort, this comes for its accord, since that would imply that Respondent has been willfully blind to such rights.

Furthermore, by using the Domain Name for a pay-per-click parking page, it is likely that Respondent attempts to attract Internet users to its website, by creating a likelihood of confusion with Complainant’s trademarks as to the source, affiliation, or endorsement of Respondent’s website at the Domain Name.

Finally, as evidenced by the Complaint, Respondent David Smith also offered to sell the Domain Name to Complainant for USD 500, therefore for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name.

Under these circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith.

7. 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 <revlonrun.com> be transferred to Complainant.

Wolter Wefers Bettink
Sole Panelist
Dated: November 5, 2010

 

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