WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Amar Fazil
Case No. D2011-0014
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, internally represented.
The Respondent is Amar Fazil of Middlesbrough, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <revlonperfect1.com>, <revlonperfect1.info>, and <revlonperfect1.net>, <revlonperfect1.org> are registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2011 in respect of the disputed domain names <revlonperfect1.com>, and <revlonperfect1.net>, <revlonperfect1.org>. On January 5, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the three domain names. On January 7, 2011, 1&1 Internet AG transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. An amendment to the Complaint was filed with the Center on January 6, 2011 to add the domain name <revlonperfect1.info>, and 1&1 Internet AG later confirmed that the Respondent is also listed as the registrant of this domain name.
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 January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. The Respondent sent an email communication to the Center on January 31, 2011, indicating its intent to transfer the disputed domain names to the Complainant, and the Center based on the Respondent’s email transmitted by email an instruction as to a suspension of the proceedings if parties wish to explore a possible settlement. The Complainant in its reply of February 1, 2011 indicated its intent not to request for a suspension, and the proceedings continued. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 1, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 16, 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
Each of the disputed domain names was registered on June 8, 2010.
The Complainant is one of the world’s best known cosmetic companies. It has marketed cosmetic and related products throughout the world for over 75 years and it owns, by itself and its related companies, more than 2,600 trademark registrations and applications incorporating the trademark REVLON. It owns over 350 domain name registrations incorporating the word “Revlon” and has been the successful complainant in over 30 domain name disputes under the Policy. In 2009 the Complainant’s net sales were of the order of USD 1.2 billion and its advertising expenditure was USD 230.5 million. It promotes its products under the REVLON trademark across a broad range of media and product promotions.
The Complainant sent cease and desist letters to the Respondent on September 16, 2010, September 27, 2010 and October 5, 2010. The Complainant states that as it has received no response to these emails.
At the time the Complaint was filed, none of the disputed domain names resolves to an active website.
5. Parties’ Contentions
The Complainant contends that it has fully demonstrated rights in the trademark REVLON and that the addition of the laudatory term “perfect” and the numeral “1” do not serve to distinguish the disputed domain names from the Complainant’s trademark. The Complainant asserts that it has not authorized or permitted the Respondent to use its registered trademark REVLON, and there is no relationship between the Complainant and the Respondent. The Complainant further contends that the Respondent has not established, and could not establish, any of the circumstances set out in paragraph 4(c) of the Policy. The Complainant therefore contends that it has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names and the Respondent has failed to contest that showing.
The Complainant contends that in the light of its worldwide reputation in its REVLON trademark the Respondent had at least constructive knowledge of the Complainant’s rights when he registered the disputed domain names and has continued to hold the disputed domain names in the face of formal notice to him of the Complainant’s rights and objection to the registration and holding of the disputed domain names. The Complainant further contends that the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting its REVLON trademark in a corresponding domain name and that it has engaged in a pattern of such conduct. The Complainant further contends that the registration of the disputed domain names was in contravention of the representations and warranties given to the concerned registrar of the disputed domain names under its registration agreement.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated, and it has been recognized in many prior UDRP panel decisions under the Policy, that the Complainant’s trademark REVLON is a famous mark. The disputed domain names consist of the trademark REVLON with the addition of the laudatory word “perfect” and the numeral “1”. The addition of a laudatory or descriptive term does not serve to distinguish the disputed domain names from the Complainant’s trademark rather, as has been recognized in many prior panel decisions, this serves to accentuate rather than to diminish the confusing similarity. See for example, Revlon Consumer Products Corporation v. Private Whois Service, WIPO Case No. D2010-1207.
The Panel therefore finds that the disputed domain names are each confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s assertion that it has not licensed or authorized the Respondent to use its trademark in the disputed domain names. The trademark is a world famous, distinctive, invented word. The Respondent has made no attempt to show that he is commonly known by the disputed domain names, or that he is using them in connection with the bona fide offering of goods or services, or is making any legitimate noncommercial or fair use of the disputed domain names. There is no other apparent basis upon which the Respondent could lay claim to a right or legitimate interest and he has not attempted to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
As noted above, the Complainant’s trademark is a world famous distinctive invented word. It is therefore inconceivable to the Panel that at the time of registering the disputed domain names the Respondent was unaware of the Complainant’s rights. The Respondent could not therefore at the time of registration of the disputed domain names, have given to the concerned registrar of the disputed domain names the representations and warranties that
“… your domain name does not infringe the copyright, trademark or any other intellectual property rights of any person …”.
The only reasonable assumption therefore is that the Respondent registered the disputed domain names in complete disregard for the Complainant’s rights and with the intention of somehow profiting from his ownership of the disputed domain names at some point in the future.
The Panel therefore finds that each of the disputed domain names was registered in bad faith.
None of the disputed domain names resolves to an active website. There is therefore no evidence that the Respondent is using the disputed domain names, nor is there evidence that he has attempted to sell the disputed domain names or that he has registered them in order to prevent the Complainant from reflecting its trademark in the corresponding domain names. There is no evidence that the Respondent is a competitor of the Complainant.
Although there is no evidence that the Respondent is actively using the disputed domain names to direct to an active website that does not conclude, for the purposes of the Policy, the question of whether or not the disputed domain names are being used in bad faith. Since the very beginning of the operation of the Policy it has been recognized that, when taken in combination with other indications of bad faith, the passive holding of a domain name can constitute bad faith use of the domain name. The Complainant’s trademark is world famous. The Respondent has failed to formally respond to the Complaint and has provided no evidence of any intended good faith use of the disputed domain names and he has ignored the objections and demands of the Complainant. In the words of the learned panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003:
“[T]aking into account all of the above, it is not possible to conceive of any plausible, actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
See also the decision in Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
The Panel therefore finds that the disputed domain names have each been registered and are being used in bad faith.
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 names <revlonperfect1.com>, <revlonperfect1.info>, and <revlonperfect1.net>, <revlonperfect1.org> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: March 1, 2011