WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Domains by Proxy, Inc./Brian Dean
Case No. D2010-1742
1. The Parties
Complainant is Revlon Consumer Products Corporation of New York, NY, United States of America, represented internally.
Respondent is Domains by Proxy, Inc./Brian Dean, of Scottsdale, AZ, United States of America, and Cranston, NY, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <almaycoupons.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2010. On October 14, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 15, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint in view of the Registrar’s disclosure. The Complainant filed an amendment to the Complaint on October 29, 2010.
The Center verified that the Complaint together with the amendment 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 the Respondent (both Domains by Proxy, Inc. and Brian Dean) of the Complaint, and the proceedings commenced on November 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2010.
The Center appointed Seth M. Reiss as the sole panelist in this matter on December 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
Complainant, and its predecessors, affiliates, subsidiaries and related companies have manufactured, marketed and sold beauty products under the ALMAY trademark continuously since 1931. ALMAY is a fanciful mark with a storybook origin. In 1930, Fannie May Woititz, the wife of chemist Alfred Woititz, complained that there were no makeup or skin care products that she could safely use without irritating her sensitive skin. Alfred Woititz devised a formula for cosmetics with the help of Dr. Marion Sulzberger, a dermatologist. These cosmetics were gentle enough for Fanny May Woititz to use every day. The trademark ALMAY is a fanciful combination of parts of the names "Alfred" and 'Fanny May". The ALMAY brand was launched in 1931.
According to Complainant, the ALMAY brand claims a number of distinctions, including being: (i) the first hypoallergenic cosmetics brand; (ii) the first U.S. cosmetics brand to make 100% fragrance-free products; (iii) the first U.S. cosmetics brand to disclose a]] ingredients used; (iv) the first U.S. cosmetics brand to perform safety testing for allergy and irritation; (v) the first U.S. cosmetics brand to formulate for contact lens wearers; and (vi) the first U.S. cosmetics brand to create cosmetic regimens for specific skin types.
Complainant acquired the ALMAY brand in 1987 and has since expanded the brand to include a full line of skincare and makeup products. Complainant states that ALMAY is today one of the best-known names in cosmetics and beauty care products and is a leading mass-market cosmetics brand. In 2009, Complainant had many millions of dollars in net sales of ALMAY products in the United States and in other countries around the world. Complainant sells ALMAY products internationally through wholly-owned subsidiaries and through distributors.
Complainant and its predecessor have spent many millions of dollars over several decades advertising and promoting ALMAY products. Complainant advertises ALMAY products on television, in print, on the Internet, and on point-of-sale materials. Retailers also advertise ALMAY products in circulars. Complainant claims to have pioneered the use of celebrities in its advertising, featuring prominent actors, singers, and models for its REVLON brand including the ALMAY brand. The Complaint names a number of distinguished celebrities who promote the REVLON product line and ALMAY brand.
Complainant has also sponsored numerous philanthropic causes and fundraising events under its ALMAY brand, including, for example, the Almay Rainforest Concert at Carnegie Hall in New York City, which benefits The Rainforest Foundation founded to support and protect the world's rainforests.
Complainant currently owns 80 domain names that incorporate the ALMAY trademark and variations thereof. Complainant has maintained a presence for its ALMAY brand on the Internet since October 2000, when its website at “www.almay.com” was officially launched.
Complainant or one of its related companies currently owns over 22 United States trademark registrations and/or pending applications for trademarks incorporating the ALMAY term dating from as early as 1972, and more than 300 trademark registrations and/or pending applications for trademarks incorporating the ALMAY term worldwide. Complainant characterizes the ALMAY trademark as one of Complainant's most valuable assets and trademark protection as very important to Complainant’s business.
Complainant states that Respondent has no relationship with Complainant and no permission from Complainant to use any ALMAY trademark.
According to the Registrar's WhoIs database, the disputed domain name was registered on March 22, 2010, and held in the name of Domains by Proxy, Inc. Domains by Proxy, Inc. is a privacy service of Registrar GoDaddy.com. After being notified of this proceeding, GoDaddy.com, Inc. revealed the underlying registrant of the disputed domain name to be Brian Dean with a Cranston, New York address. Complainant contends that the zip code listed by Brian Dean in his contact details does not correspond to a locale called Cranston, New York.1
At the time the Complaint was filed, Complainant states the disputed domain name pointed to a website that featured images of products bearing the ALMAY trademark as well as sponsored links to competitors of the Complainant.2 Appended to the Complaint are printouts of the content of the website at the disputed domain name. Included in the website text is the following disclaimer:
“Legal Disclaimer: AlmayCoupons.com is in no way affiliated with or sponsored by Almay Inc. The Almay logo is the registered trademarks of Almay Inc. The use of Almay names and their names, descriptions and/or numbers are used in applications and descriptions for reference purposes only.”
By letter dated July 15, 2010, Complainant requested that Respondent cease and desist from the further use of the disputed domain name. After no response was received, Complainant sent two follow-up e-mails, which also went unanswered.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to the ALMAY mark in which Complainant has rights. Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith. By way of remedy, Complainant asks that this Panel order the disputed domain name transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Trademark rights may be established in UDRP proceedings by registration and/or use. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Questions 1.1 and 1.7. Complainant has provided this Panel with overwhelming evidence that Complainant holds valuable proprietary trademark rights in the ALMAY mark.
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant's mark. Revlon v. IONE Inc, WIPO Case No. D2010-1000. The addition of descriptive or generic terms to a trademark will generally not distinguish the contested domain name from the mark and, in appropriate circumstances, may actually increase the likelihood of confusion. LEGO Juris A/S v. Private Registration/Dophe Dot., WIPO Case No. D2009-0753. Here, the Panel finds that the addition of the generic term "coupons" to the distinctive and well-known ALMAY trademark does not avoid likelihood of confusion and arguably adds to it.
It is also universally accepted that the addition of a top level domain ending like ".com" to the disputed domain name does not distinguish the name from the mark and does not alleviate confusion. Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013.
Accordingly, the Panel finds that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, with respect to a respondent’s lack of right or legitimate interests, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant may be deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1.
Complainant never gave Respondent authorization or permission to use Complainant’s ALMAY mark. There is no evidence in the record that Respondent is known by the disputed domain name or is making a legitimate, non-commercial fair use of the disputed domain name. The disclaimer posted on Respondent’s website further dispels any notion that Respondent may have been unaware of the proprietary rights held by Complainant in the ALMAY mark. By choosing not to submit a response, Respondent forfeited the right to demonstrate some right or legitimate interest in the domain name not apparent from the record.
This Panel is persuaded that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The circumstances of this case make plain that Respondent “registered and is using the disputed domain name to intentionally attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with [Complainant’s ALMAY mark] as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] website.” Policy, paragraph 4(b)(iv).
This Panel agrees with Complainant that, “[g]iven the highly distinctive and fanciful nature of the ALMAY trademark, it is virtually inconceivable that the Respondent chose to register the Domain Name without being aware of the existence of the Complainant's ALMAY trademark.” Revlon Consumer Products Corp. v. Easy Weight Loss Info. Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071.
The fame of the ALMAY mark alone, in the absence of some plausible right or legitimate interest in the Respondent, compels a conclusion of bad faith registration and use. Daimler Chrysler Corporation v. Web4COMM SRL Romania, WIPO Case No. DRO2006-0003 ("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"); Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith").
The disclaimer posted by Respondent on his “www.almaycoupons.com” website is ineffective to avoid a finding of bad faith registration and use:
“The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer is sometimes found to support other factors indicating good faith or legitimate interest.”
Because Respondent’s website appears to the Panel to be a commercial website offering for sale products in competition to the ALMAY products sold by Complainant, the disclaimer does not shield Respondent as it might were the website dedicated, for example, to criticism or comment. Rather, the disclaimer here simply bolsters the finding that Respondent adopted and was using the disputed domain name with full knowledge of the valuable rights belonging to Complainant that subsisted therein.
The Panel finds that Complainant has met its burden of establishing the third and final element 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 <almaycoupons.com> be transferred to Complainant.
Seth M. Reiss
Dated: December 20, 2010
1 In a companion UDRP case, Revlon Consumer Products Corporation v. Brian Dean, WIPO Case No. D2010-1858, involving the domain name, <revlonnailpolish.net>, Mr. Dean lists his contact address as Cranston, Rhode Island.
2 At the time the Panel prepared this decision, the website pointed to by the disputed domain name failed to resolve. At the time the Panel issued this decision, the website pointed to by the disputed domain resolved to the website described by Complainant depicting Revlon products and offering links to competitive products.