WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Muhacus Marketing / Domains by Proxy, Inc.
Case No. D2010-1807
1. The Parties
Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented internally.
Respondents are Muhacus Marketing of Willingboro, New Jersey, United States of America and Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <almayeyemakeup.com> (“Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 27, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 27, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing 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 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. 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 Respondents 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. On November 1 and November 2, 2010, the Center received two unsigned emails from an entity purporting to be the owner of the Domain Name, indicating that it did not use said Domain Name. On November 2, 2010, Complainant confirmed it did not wish to seek a suspension period in which to discuss possible settlement options with Respondents. Respondents did not submit any formal Response. Accordingly, the Center notified Respondents’ default on November 22, 2010.
The Center appointed Terrell C. Birch as the sole panelist in this matter on December 3, 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 is the owner of numerous trademark registrations for the trademark ALMAY as presented in Annex 2 of the Complaint.
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 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 (“U.S”) and in other countries around the world. Complainant sells Almay products internationally through wholly-owned subsidiaries and through distributors.
Complainant produces and sells many eye makeup products, some of which are shown in the printout of the Complainant's ALMAY brand website, at “www.almay.com”, presented in Annex 4 of the Complaint.
The Almay brand was launched in 1931. Since 1931, the Almay brand has achieved numerous milestones, 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 all 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.
The trademark ALMAY is a fanciful combination of parts of the names "Alfred" and "Fanny May". The trademark ALMAY has no generic or descriptive meaning.
In 1987, the Almay brand was acquired by Complainant and has since expanded to a full line of skincare and makeup products. Today, Almay is one of the foremost cosmetics brands.
Complainant prevailed in a prior dispute resolution proceeding to protect its ALMAY trademark against a United Kingdom registrant of the domain name <almay.co.uk>. A copy of the decision by the Nominet UK Dispute Resolution Service, decided April 29, 2004, ordering the transfer of the domain name to Revlon is presented in Annex 5 of the Complaint.
Complainant has also commenced prior UDRP proceedings to protect its REVLON trademark against other respondents, and in each case that has been decided to date the respective panel has ordered that the disputed domain name be transferred to Complainant. A list of these proceedings is presented in Annex 6 of the Complaint.
Complainant's parent company, Revlon, Inc., is a publicly traded company (trading as REV on the New York Stock Exchange) and is frequently referenced in news, financial and business publications and websites. Almay, Inc. is also the name of a wholly-owned subsidiary of Complainant. A sampling of articles discussing the Complainant or Almay products is presented in Annex 7 of the Complaint.
Revlon and its predecessor to the Almay brand 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 pioneered the use of celebrities in its advertising, featuring prominent actors, singers, and models for its Revlon brand, and this tradition applies equally to the Almay brand. A sampling of exemplary ALMAY advertisements, some of which feature some of the above-mentioned celebrities, is presented in Annex 8 of the Complaint.
Complainant has also sponsored numerous philanthropic causes and fundraising events under its ALMAY mark, including, for example, the Almay Rainforest Concert at Carnegie Hall in New York City. This event benefits the Rainforest Foundation, which was founded by Sting and Trudy Styler to support and protect the world's rainforests. The event was successful and received global press coverage. As shown in the articles and photographs presented in Annex 6 of the Complaint, the ALMAY trademark and brand were prominently featured throughout the event, including not only as part of the name of the event, but as the backdrop for the red carpet arrival of celebrities.
Complainant currently owns more than four-hundred and fifty (450) domain name registrations worldwide. Eighty (80) of these domain names 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. A copy of the current Almay home page and various other sections of this website are presented in Annex 9 of the Complaint. The Almay website features current products and promotional information and is updated regularly.
According to the Complaint, the ALMAY trademark is one of Complainant's most valuable assets and trademark protection is very important to its business. Complainant, or one of its subsidiaries, affiliates, or related companies, currently owns over twenty-two (22) United States trademark registrations and/or pending applications for trademarks incorporating the ALMAY trademark, and more than three hundred (300) trademark registrations and/or pending applications for trademarks incorporating the ALMAY mark worldwide. As noted above, Annex 2 to the Complaint presents photocopies of four (4) U.S. certificates of trademark registration for the trademark ALMAY, covering a variety of goods.
The trademark registrations are valid and subsisting, and are exclusively and extensively used by Complainant, its corporate affiliates, and/or authorized licensees and serve as prima facie evidence of Complainant's ownership and the validity of the trademarks. See 15 U.S.C. § 1115. These trademark registrations are conclusive evidence of Complainant's exclusive right to use the marks in connection with the stated goods and services. See 15 U.S.C. § 1115(b).
Respondent has no relationship with Complainant. Respondents appear to have no permission from Complainant to use any ALMAY trademark.
According to the Registrar's WhoIs database, the Respondents registered the Domain Name on January 19, 2010. (Annex 1 to the Complaint).
The Domain Name points to a website that features sponsored links to competitors of the Complainant. That website does not disclose whether the Respondents have any relationship with the Complainant, the trademark owner. A printout of that website is presented in Annex 10 of the Complaint.
By letter dated July 15, 2010, sent via e-mail to Respondent at firstname.lastname@example.org, the contact e-mail listed as the administrative contact in the WhoIs information for the Domain Name (Annex 1 to the Complaint), Complainant requested that Respondents cease and desist from the further use of the subject Domain Name. Since no reply was received, Complainant sent follow-up e-mails on July 22, 2010 and August 5, 2010. A copy of these e-mails is presented in Annex 11 of the Complaint.
5. Parties’ Contentions
Complainant contends that:
(1) the Domain Name is confusingly similar to Complainant's trademark;
(2) Respondents have no rights or legitimate interests in respect of the Domain Name; and
(3) the Domain Name has been registered and is being used in bad faith by Respondents.
Respondents did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i), for the following reasons:
(a) Prior panels have recognized that 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 Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000. The addition of ".com" to the Domain Name is non-distinctive because it is a generic top-level domain (gTLD) designation necessary for registration of a domain name and does not avoid likely confusion. Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013. See also, Nokia Corporation v. Nokiagirls. com a.k.a IBCC, WIPO Case No. D2000-0102.
(b) The addition of descriptive, generic terms to a trademark is generally not a distinguishing feature, but may actually increase the likelihood of confusion. Here, the addition of the generic term "eye makeup" to the distinctive and well-known ALMAY trademark does not avoid likelihood of confusion, but rather adds to it because Complainant sells many eye makeup products under the ALMAY trademark. See, e.g., Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936 ("[T]he addition of the descriptive word "beauty" to the Complainant's REVLON trade mark, by referencing the goods for which the mark is known, increases the likelihood of confusion."); LEGO Juris A/S v. Private, Registration/Dohe Dot, WIPO Case No. D2009-0753 (adding terms that are generic or descriptive of Complainant's products is likely to produce more confusion since it creates an obvious association with Complainant); and Revlon Consumer Products Corporation v. Domain Manager, Page Up Communications, WIPO Case No. D2003-0602 (Panel ordered transfer of <revloncosrnetics.info>, <revlononline.info>, and <revlonstore.info> to Revlon).
B. Rights or Legitimate Interests
The Panel finds that the Respondents have no rights or legitimate interests in the Domain Name pursuant to the Policy, paragraph 4(a)(ii) as demonstrated by the following:
(a) Respondents have no relationship with Complainant and Complainant has not authorized Respondents to use the ALMAY trademark;
(b) Respondents had, at a minimum, constructive knowledge of Complainant's rights because the Domain Name was registered well after many of Complainant's trademark registrations issued. (Annexes 1 and 2 of the Complaint). Pursuant to 15 U.S.C. § 1072, and noting that both Respondents appear to be located in the U.S., the relevant jurisdiction for Complainant’s relied – upon marks, registration of the ALMAY trademark constitutes constructive notice of the mark. Numerous panels have held that where the complainant has valid trademark rights in the trademark comprising the disputed domain name, and where such rights exist in the home country of the registrant, the principles of constructive notice in that jurisdiction may fairly be applied, and the respondent may be presumed to have notice of the trademark. E.g., Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.
Further, given the distinctiveness and reputation of the ALMAY trademark, including in the United States and internationally, this Panel finds it improbable that Respondents would have rights with respect to the Domain Name. See Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936, where the panel cited the international fame of the REVLON trademark in ordering transfer of the domain name to Revlon. See also, Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291; Beiersdorf AG v. Good Deal Communications, WIPO Case No. D2000-1759; Deutsche Telekom AG v. Pluto Domain Services Private Limited, WIPO Case No. D2008-1916 and Deutsche Telekom AG v. Wireless Warehouse, WIPO Case No. D2005-0723.
(c) Respondents have not attempted to demonstrate, and Complainant has not been able to determine,
(i) that before notice was given to Respondents of this dispute, Respondents used the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that Respondents have been commonly known by the Domain Name, even if they had not acquired any trademark or service mark rights; or
(iii) that Respondents are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Moreover, it is well settled that use of a domain name such as that which is being made by the Respondents here on their website, namely, a website featuring sponsored links targeting Complainant’s marks, does not constitute a bona fide offering of goods or services, as required by paragraph 4(c)(i) of the Policy; nor is it a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. As stated by the panel in McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No. 1230837:
"[S]uch use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), since Complainant's mark is clearly the tool used by Respondent to garner attention to the corresponding website. In addition, Respondent presumably receives referral fees of some sort for the placement of these advertisements on the corresponding website. Thus the use of the disputed domain name does not represent a legitimate noncommercial or fair use under the Policy's 4(c)(iii)".
See also, e.g., TM Acquisition Corp. v. Sign Guards a/k/a William Moore, NAF Claim No. 132439 (finding that the respondent's diversionary use of the complainant's marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant's competitors, was not a bona fide offering of goods or services); Bank of America Corporation v. Northwest Free Community Access, NAF Claim No. 180704; Computer Doctor Franchise Systems,Inc. v. The Computer Doctor, NAF Claim No. 95396; Dr. Martens International Trading GmbH, Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd,, WIPO Case No. D2009-1253.
The parking of a domain name with a registrar to target a Complainant’s trademark is not a legitimate bona fide use. As stated by the panel in Rich Products Corporation v. Cynthia Kirk, WIPO Case No. D2007-0871:
"Here, it is clear that the Respondent has no rights or legitimate interests in the Domain Name. First, Complainant has shown that the domain name is simply `parked' with the Registrar, in that the Website merely links to other commercial websites and does not itself offer any original content or goods or services [footnote omitted]. The use of a domain name that merely offers links to other websites is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy." See Sports Holdings, Inc. v. MB, WIPO Case No. D2006-1262.
Lastly, neither the WhoIs Record, nor the Respondants’ website, bears any indication whatsoever that Respondents are commonly known by the Domain Name.
Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the Domain Name. Respondents have failed to demonstrate legitimate interests in the Domain Name or rebut the prima facie case. Accordingly, the Panel has determined that Respondents lack rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel has determined that Respondents registered and are using the Domain Name in bad faith in violation of paragraph 4(a) of the Policy, for the following reasons:
(a) This Panel finds Respondents have registered the Domain Name in violation of section 2 of the Policy, which states in pertinent part:
"By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
Complainant's Mark is Well-known and Distinctive
(b) Complainant's mark ALMAY is a well-known, coined term. Given the highly distinctive and fanciful nature of the ALMAY trademark, the Panel finds it is virtually inconceivable that the Respondents chose to register the Domain Name without being aware of the existence of the Complainant's ALMAY trademark. See Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, supra; Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, supra; Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Accordingly, Respondents have no rights in the Domain Name. The Domain Name was registered and is being used in bad faith. See, e.g., Revlon Consumer Products Corporation v. Brandy Farris, supra; DaimlerChrysler 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, supra (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").
Further, as held by the Panel in Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, supra:
"All these factors indicate that the Respondent knew of the Complainant's trademark and registered the domain name with an intent to obtain exclusive rights, hence excluding the Complainant from them. That there is no evidence of precisely what the Respondent hoped to gain thereby is irrelevant. A mere intention to obstruct when the domain names are registered is sufficient to clear the first hurdle of Paragraph 4(b)(ii)."
(c) Paragraph 4(b)(iv) of the Policy provides that, if the circumstances indicate that by using the Domain Name the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website, then this is evidence of bad faith registration and use on behalf of the Respondents. Many panels have endorsed this position, including, for example, in Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Compart AG v. Compart.com/Vertical Axis, Inc., WIPO Case No. D2009-0462.
Here, the Respondents are using the ALMAY trademark in the Domain Name to misappropriate the goodwill of the Complainant and redirect Internet traffic intended for the Complainant for their own purposes. The website at “almayeyemakeup.com” incorporates several sponsored links to competitors of the Complainant, which presumably provide the Respondents with click-through commissions. See L'Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 ("[s]uch exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy"). The Domain Name here is parked with the registrar in order to connect Internet users to the Respondants’ website which incorporates several sponsored links to competitors of the Complainant. As determined by prior UDRP decisions, parking a domain name in such a manner for financial gain is common among cyber-squatting cases and may demonstrate bad faith on the part of the registrant. See Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.
Paragraph 4(b)(iv) of the Policy provides that, if the circumstances indicate that by using the Domain Name the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' website, then this is evidence of bad faith registration and use on behalf of the Respondents. Many panels have endorsed this position, including, for example, Volvo Trademark Holding AB v. Unasi, Inc., supra; Compart AG v. Compart.com/Vertical Axis, Inc., supra.
Failure to Respond to Cease-and-Desist Letter
(d) Respondents have failed to respond to Complainant's cease-and-desist letter and follow-up emails and have maintained their website over Complainant's objections. In this Panel’s view, such silence and ongoing cybersquatting further evidences the Respondents’ bad faith. See Compiere, Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242.
(e) Moreover, the Respondents deliberately embedded Complainant's ALMAY trademark in the source code underlying their website as shown in the printout attached as Annex 12 to the Complaint. Such use of Complainant's trademark demonstrates Respondents’ awareness of the ALMAY trademark and also evidences a bad faith, conscious effort to divert Internet traffic away from Complainant’s site consistent with paragraph 4(b)(iv) of the Policy. See Tata Sons Limited v. tataconnect, WIPO Case No. D2006-0572 (the use of complainant's trademark in metatags is, on its own, evidence of registration and use in bad faith); and Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520 (use by respondent of complainant's trademark in a metatag "revealed his awareness and knowledge of Complainant's use of 'consitex' as a common law trademark").
As Respondent has not entered any formal Response to the Complaint and is therefore in default, the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). See also, ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Société Des Bains De Mer Et Du Cercle Des Etrangers A Monaco v. Iggi Networks Media Group, WIPO Case No. D2000-1324.
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, <almayeyemakeup.com> be transferred to Complainant.
Terrell C. Birch
Dated: December 17, 2010