WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Domains by Proxy, Inc. / CV. Hanifan Perkasa Utama
Case No. D2010-1948
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York City, New York, United States of America, of United States of America.
The Respondent is Domains by Proxy, Inc. of Arizona, United States of America / CV. Hanifan Perkasa Utama of Jakarta, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <revloneyeshadow.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2010. On November 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On November 19, 2010, the Registrar 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 the Complainant on November 24, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 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 of the Complaint, and the proceedings commenced on November 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 28, 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
The Complainant has manufactured, marketed and sold beauty products under REVLON trademark since 1932. Presently, the Complainant invests millions of dollars in merchandising every year and the REVLON products can be found all over the world.
The Complainant and its related companies own numerous trademark registrations incorporating the word REVLON worldwide.
The Complainant has also a strong presence on the Internet, operating at “www.revlon.com” and owing several other domain names incorporating the trademark REVLON.
The disputed domain name <revloneyeshadow.com> was created on February 6, 2010.
On October, 2010 the Complainant sent cease and desist Letters to the Respondent Domains by Proxy, Inc. The Respondents Domains by Proxy, Inc. did not reply.
The Panel accessed the web page placed at <revloneyeshadow.com> domain name on January 8, 2011 and there was a pay-per-click landing web page.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the Complainant’s trademark. According to former UDRP decisions the Top Level Domain (.com) has no source-indicating significance. The disputed domain name wholly incorporates the Complainant’s registered trademark. The addition of the generic term “eyeshadow” is not enough to distinguish the domain name from the Complainant’s trademark.
(ii) The Respondents have no rights or legitimate interests in the disputed domain name, nor have any relationship with the Complainant. Also, the domain name was registered well after many of Complainant’s trademark registrations. The Respondents’ notice of the trademark is presumed. The Respondents have never use or made preparations to use the disputed domain name in connection with a bona fide offering of goods and services. Moreover the Respondents are using the disputed domain name in connection with monetized parking pages that include links to websites that offer competitive services with those offered by the Complainant. The Respondents have never been commonly known by the disputed domain name and have never acquired any trademark or service mark in the disputed domain name. The Respondents are making an illegitimate, commercial, unfair use of the disputed domain name with intent for commercial gain misleadingly to divert consumers.
(iii) The disputed domain name has been registered and is being used in bad faith. The REVLON trademark is a famous, coined term and it is inconceivable that the Respondents have registered the domain name without being aware of the existence of the Complainant’s trademark and business. The Respondents are using the disputed domain name in connection with monetized parking pages that include links to websites that offer competitive services with those offered by the Complainant. Also, the Respondents deliberately embedded the Complainant’s REVLON trademark in the source code of the website posted on the disputed domain name and have maintained the infringing website active over the Complainant’s objections.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that REVLON is a trademark directly connected with the Complainant’s activities.
Annex 2 of the Complaint and Annex 2 of the Amendment of the Complaint demonstrate registrations of REVLON trademark in the United States of America since at least 1990 and in Indonesia since 1959.
The trademark REVLON is wholly encompassed within the disputed domain name, which also includes the generic term “eyeshadow”. The Panel concludes that the addition of the term "eyeshadow" is not sufficient to refute the similarity between the disputed domain name and the Complainant’s trademark, required under paragraph 4(a)(i) from the Policy.
In a previous UDRP decisions, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question”
(F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).
Furthermore, the Complainant proved that the term "eye shadow" is used to identify some of its cosmetics products.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondents’ default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondents have no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondents intent to use or to make preparations to use the domain names in connection with a bona fide offering of goods or services. Indeed, the Complainant filed screenshots of the web pages that were published at the disputed domain name showing pay-per-click pages filled with links to competitor’s websites.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondents, and it does not appear from the present record that the Respondents are commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
When the disputed domain name was registered the Complainant’s trademark REVLON was already famous and highly recognized worldwide in the field of beauty products. Therefore, it is not feasible that the Respondents could have been unaware of the Complainant’s reputation and business.
Also, the disputed domain name is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondents:
(i) create a likelihood of confusion with the Complainant’s trademark;
(ii) obtain click-through revenue from this practice; and
(iii) deprive the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promote products offered by competitors.
In situations like this, former UDRP decisions have considered this type of usage of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474, or also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The use of privacy services and the inclusion of the term REVLON on the source code of the web page published on the disputed domain name also amplify the characterization of bad faith registration and use in the present case.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third 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 <revloneyeshadow.com> be transferred to the Complainant.
Dated: January 10, 2011