WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Ye Li
Case No. D2010-1568
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York, United States of America represented by Erica Swartz of United States of America.
The Respondents are Ye Li of HangZhou, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <revlonfragrance.com> (the "Domain Name") is registered with Guangzhou Ming Yang Information Technology Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 17, 2010, the Center transmitted by email to Guangzhou Ming Yang Information Technology Co., Ltd. a request for registrar verification in connection with the Domain Name. On September 20, 2010, Guangzhou Ming Yang Information Technology Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondents of the Complaint, and the proceedings commenced on September 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondents’ default on October 21, 2010.
The Center appointed Douglas Clark as the sole panelist in this matter on November 2, 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.
The Domain Name registration agreement is in Chinese. The Complainant filed request for English should be language of the proceedings on September 24, 2010. The Center has not been received any response from the Respondents. The Panel will deal with the issue of the language of proceedings in its substantive decision.
4. Factual Background
The Complainant is the owner of trademark REVLON for cosmetics and related beauty care products and that it has manufactured, marketed and sold beauty products under the trademark REVLON continuously since 1932 in approximately 175 countries. The trademark REVLON is an invented word derived from the founders, Charles and Joseph Revson and Charles Lachman, who contributed the "l" in the REVLON name. Revlon has no generic or descriptive meaning.
The Complainant, or one of its subsidiaries, affiliates, or related companies, currently owns over fifty USPTO registration and/or pending applications for trademarks incorporating the REVLON trademark, and more than two thousand six hundred trademark registration and/or pending applications for trademarks incorporating the REVLON mark worldwide. Fourteen United States, one Chinese and one Japanese Certificate of trademark registration for the trademark REVLON have been offered at Annex 4 to the Complaint, which are USPTO registration certificates: 2797953; 1886476; 1625545; 1660540; 2025709; 3035671; 2770851; 3035673; 2886731; 2891418; 2886630; 2662778; 2886732; 2789089; Chinese registration certificate 143994; and Japanese registration certificate 771191.
In 2009, Revlon's net sales were USD1,295,900,000.00, and spent USD230.5 million in advertising its portfolio of products worldwide. Fragrance is one of the products Complainant produces.
The disputed Domain Name <revlonfragrance.com> was registered on June 29, 2010.
5. Parties’ Contentions
i). the Domain Name is confusingly similar to the Complainant's registered trademark
The Complainant referred to prior panels' decisions on similar cases, arguing that by adding an addition would not distinct Domain Name in question from the trademark REVLON. The addition of descriptive, generic terms to a trademark is generally not a distinguishing feature, but actually increases the likelihood of confusion. Especially the addition of the generic or descriptive word "fragrance", which is a product the Complainant markets, to the distinctive and famous REVLON trademark does not avoid likelihood of confusion, but rather adds to it.
ii). the Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant argues that the Respondent has no relationship with the Complainant and the Complainant has not authorized the Respondents to use the REVLON trademark. The Respondent has constructive knowledge of the Complainant's rights because the Domain Name was registered after many of the Complainant's trademark registration issued. The Complainant also cites the cease-and-desist letter concerning the Domain Name <revlonjapan.com> which was sent to the Respondent just one day of the registration of the Domain Name in issue so as to prove that the Respondent is fully aware of the existence of the trademark REVLON and the Complainant.
The Complainant also argues that the use of the Domain Name in issue does not constitute bona fide use, Furthermore, the Respondent is not commonly known by the Domain Name, and the Respondent does not use the Domain Name as part of their legal name, corporate name, or any commonly-known identifier.
iii). the domain name has been registered and is being used in bad faith
The Complainant argues that the term “revlon” is a famous, coined, highly distinctive and fanciful name. Given that the Respondent had actual knowledge of the Complainant's rights in the REVLON trademark prior to registering the Domain Name, notwithstanding this actual notice, the Respondents' proceeding to register the Domain Name is clear evidence of bad faith.
Based on the communications between the Complainant and the Respondent, the Respondent offered to sell the Domain Name for USD1000, which further illustrates the bad faith of the Respondent.
Further to the links incorporated at <revlonfragrance.com> leading to external websites selling cosmetic products offered by the Complainant's competitors shows the bad faith in accordance with paragraph 4 of the Policy.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceedings
In accordance with Rules paragraph 11, "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement."
In this case, the registration agreement is in Chinese. However, the Complainant has requested to precede procedure in English on the following grounds:
i) the disputed Domain Name is comprised of a coined English word ”revlon”, and the English word "fragrance". The Domain Name does not incorporate the Chinese word for "fragrance";
ii) the website which the Domain Name points to does not contain any words in the Chinese language;
iii) the root server of suffix “.com” is located in the United States, the Respondent has already chosen English and should not be granted a request for the proceedings to be in Chinese language;
iv) the correspondence between the Complainant and the Respondent, including the initial cease-and-desist letter, and subsequent emails, is entirely in English;
v) English is widely used worldwide and is the first language of the Internet;
vi) Revlon is headquartered in the United States which is an English speaking country, and the language of the company is English. The Complaint and all of the accompanying Annexes have been submitted to the WIPO Arbitration and Mediation Center in English; and
vii) it would be cumbersome and to the Complainant's disadvantage if Complainant was required to translate the Complaint into Chinese. See LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052.
Given that i) the Respondent’s website is all in English, which shows the intention of marketing to international customers; ii) the pre-dispute correspondence between the Complainant and the Respondent was in English; iii) the Respondent has not taken part in the proceedings, the panel decides English should be the language of the present administrative proceedings.
6.2 Substantive elements of the Policy
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the trademark REVLON in which the Complainant has rights.
The Complainant has proved its rights by producing numerous trademark registrations for the term “revlon” incorporating REVLON in respect of cosmetics and related products in United States, the People’s Republic of China and Japan.
The Domain Name in issue incorporates REVLON as first element. The second word "fragrance" can not serve to distinguish since it is a generic term which would add to possible confusion, especially when the Complainant produces such goods. It "[e]licits a direct reference to Zegna activities and trademark both under a strict likelihood of confusion, but also under a likelihood of association." (See Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman ( WIPO Case No. D2000-1375).
Thus the Panel determines that the Domain Name in issue is confusing similar to the trademark REVLON.
For above reasons the Complainant satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the following reasons, the Panel decides that the Respondents do not enjoy rights or legitimate interests in the Domain Name:
i) the Complainant did not authorize the Respondent to register the Domain Name or otherwise to use the REVLON trademark.
ii) the Respondent’s name does not suggest any connection with the trademark REVLON. The Respondents did not respond to the case, and there is nothing in the facts to suggest that it has any rights or legitimate interests in the Domain Name except for the mere fact that the Respondent is the owner of the Domain Name. Mere registration does not seem sufficient to establish rights or legitimate interests since: "if this was so, all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration", according to General Electric Company v. John Bakhit ( WIPO Case No. D2000-0386).
For above reasons the Complainant satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In accordance with paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(a) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(b) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(c) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product.
Offering links directing to external websites which offer cosmetics and services of competitors of the Complainant is sufficient to satisfy the element of "bad faith".
For above reason the Complainant satisfied paragraph 4(a)(iii) of the Policy.
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 <revlonfragrance.com> be transferred to the Complainant.
Dated: November 22, 2010