WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Domains by Proxy, Inc. / Transparency Global Inc.
Case No. D2010-1949
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York, United States of America, internally represented.
The Respondent is Domains by Proxy, Inc. of Arizona, United States of America / Transparency Global Inc. of Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <revlonflatiron.com> (the “Domain Name”) is registered with Wild West Domains, Inc (the “Registrar”).
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 the Registrar a request for registrar verification in connection with the Domain Name. On November 18, 2010, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the 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. On the same date, the Center informed the Complainant that the Complaint was administratively deficient. 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 sent an email communication to the Center on December 2, 2010, proposing to transfer the Domain Name “provided that the administrative fees of incurred of $300.00 USD are paid.” The Complainant did not wish to suspend the proceeding and the Center continued the proceeding. The Respondent did not file a formal Response. Accordingly, the Center informed the Parties on December 21, 2010 that it would proceed to the appointment of the administrative panel.
The Center appointed Michelle Brownlee as the sole panelist in this matter on January 5, 2011. 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 Complaint is based upon the trademark REVLON, which is registered in the United States of America and other countries around the world for a variety of goods in various international classes. The Complainant owns United States trademark registrations for the REVLON mark in connection with cosmetics and hair care products, electric curling and straightening irons and curlers, hair combs and brushes, wigs and hairpieces, as well as other goods. The Domain Name was registered on May 28, 2010.
5. Parties’ Contentions
The Complainant has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932. REVLON is one of the world’s best-known names in cosmetics and beauty care products and is a leading mass-market global cosmetics brand. In 2009, the Complainant’s net sales
were USD 1,295,900,000, with over USD 747 million in net sales in the United States and USD 548 million in other countries around the world. The Revlon group has spent hundreds of millions of dollars over several decades advertising and promoting REVLON products. In 2009 alone, the Complainant spent over USD 230 million in advertising its portfolio of products worldwide.
The Complainant sells REVLON products in approximately 175 countries through wholly-owned subsidiaries in 14 countries and through a large number of distributors and licensees elsewhere around the world. In addition, the Complainant also has several licensees who manufacture and distribute REVLON-branded electric hair dryers, flat irons, curling irons, eyewear, false eyelashes, wigs, hairpieces and collectible dolls in many countries around the world. The Complainant’s licensees for flat irons (often referred to as straighteners or hair straighteners) in the United States and internationally, produce and sell many hair straighteners under the REVLON trademark.
The Complainant has maintained a presence on the Internet since May 1997, when its website at “www.revlon.com” was launched. The Complainant currently owns more than 700 domain name registrations worldwide. More than 350 of these domain names incorporate the REVLON trademark and variations thereof.
The Respondent has no relationship with the Complainant. The Respondent has no permission from the Complainant to use any REVLON trademark. The Respondent is using the Domain Name in connection with a web site that features images of flat irons bearing the REVLON trademark, text incorporating the Complainant’ s REVLON mark, as well as sponsored links that consist of words including “flat irons,” “hair straighteners,” and similar terms. The Respondent’s web site at the Domain Name does not offer goods or services under the Complainant’s REVLON trademark and does not disclose whether the Respondent has any relationship with the Complainant. The Respondent’s web site includes the Complainant’s REVLON trademark in the copyright notice. When an Internet user clicks on of the sponsored links on the Respondent’s web site, he or she is directed to separate pages of sponsored links entitled “Ads by Google,” which consists of additional sponsored links to several competitors of the Complainant.
The Complainant contends that the Domain Name is confusingly similar to its REVLON trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.
The Respondent sent email correspondence to the Center that stated:
“I am in receipt of the dispute and I would like to work with all concerned to resolve. Please be assured that it is not our intention to infringe upon any trademark or intellectual property rights. We are an Affiliate Marketer and all content was provided by Amazon and their widgets. Effective immediately we will take action to take the site down to ensure we are able to work the remaining details to satisfactorily resolution. If Revlon has an Affiliate Marketing program we would like to request permission to apply. Otherwise, we would be willing to transfer the domain as requested provided that the administrative fees of incurred of $300.00 USD are paid.”
The Respondent did not otherwise 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 must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has 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.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the trademark REVLON. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (finding that the domain names <christiandiorcosmetics.com> and <christiandiorfashions.com> are confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (finding that the domain names <leasinglexus.com> and <lexuselite.com> are confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the REVLON trademark with the generic term “flat iron,” a type of product on which the REVLON mark is used, is confusingly similar to the Complainant’s REVLON trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable 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 noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using of the Domain Name to provide links to web sites that sell competitive products in order to collect click-through referral fees. This activity cannot under the circumstances be considered a bona fide offering of goods or services. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to the Respondent’s site by creating confusion as to source and results in commercial gain to the Respondent. The confusion in this case is exacerbated by the Respondent’s use of the Complainant’s trademark prominently in the title of the home page and in the copyright notice on the page, both of which incorporate the Complainant’s trademark.
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 <revlonflatiron.com> be transferred to the Complainant.
Dated: January 17, 2011