WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Terry Baumer
Case No. D2011-1051
1. The Parties
The Complainant is Revlon Consumer Products Corporation, of New York, New York, United States of America, represented internally.
The Respondent is Terry Baumer, of Upper Coomera, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <revlon-foundations.com> ("the Domain Name") is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2011. On June 22, 2011, the Center transmitted by email to eNom. a request for registrar verification in connection with the Domain Name. On June 22, 2011, eNom. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 June 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2011.
The Center appointed Dawn Osborne as the sole panelist in this matter on July 25, 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 Complainant is an international cosmetic and beauty care company and owns, inter alia, trade mark registrations in the United States and Australia for REVLON for, inter alia, beauty care products.
The Domain Name was registered on December 14, 2010. It has been connected to a site featuring images of the Complainant's products and links to third party web sites featuring competing goods to those of the Complainant's.
5. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
The Complainant is the owner of the internationally famous and distinctive REVLON trade mark for cosmetics and beauty care products. Its products are sold in 175 countries. The goodwill in the REVLON mark is enormous due to continuous use and investment for more than 75 years since 1932. REVLON is a fanciful combination of the names of its founders. The mark has no descriptive or generic meaning. The Complainant produces and sells a wide variety of beauty care products including many face foundation cosmetic products.
The Complainant owns registered trade marks incorporating the REVLON mark in, inter alia, the United States and Australia and more than 2,600 trade mark registrations or pending applications worldwide.
The addition of “.com” and the descriptive term "foundations" does not serve to distinguish the Domain Name from the Complainant's trade mark. In fact, the addition of "foundations" which is a term for a make up product the Complainant sells actually increases the likelihood of confusion.
The Complainant did not give the Respondent any permission to use the REVLON mark and the Respondent has no rights and legitimate interests in the Domain Name. The Respondent registered the Domain Name on December 14, 2010 well after many of the Complainant's trade mark registrations were granted.
The Respondent has not used the Domain Name for a bona fide offering of goods and services, it has not been commonly known by the Domain Name and it is not making a legitimate non commercial or fair use of the Domain Name.
The web site attached to the Domain Name featured images of several of the Complainant's foundation products bearing the REVLON trade mark. The images also included links to the web site Amazon.com, a well-known retailer of a variety of goods including cosmetics. The site is an attempt to confuse customers for material gain between the Complainant's mark and the source of the Respondent’s web site.
Given the fame of the Complainant's mark, the use of images of the Complainant's products, links to third party businesses selling competing goods and use of metatags including the Complainant’s mark on the site attached to the Domain Name, the Respondent has registered and used the Domain Name in bad faith.
The Respondent did not respond to a cease and desist letter from the Complainant.
The Respondent did not reply to the Complainant’s contentions. On July 19, 2011, Respondent sent an email to the Center stating “This website we have nothing to do with anymore and it has been deleted”. On July 26 the Respondent sent an email to the Center stating " I have nothing to do with this anymore please don't contact me please contact speedlings", with no further explanation.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 confusing similarity
The Domain Name is confusingly similar to the Complainant’s trademark consisting of the Complainant’s REVLON trademark, a hyphen and the generic text “foundations”, face foundation being a product sold by the Complainant. The distinctive part of the Domain Dame is the REVLON trademark. The addition of the hyphen and the non distinctive text “foundations” does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s REVLON trademark.
B. Rights or Legitimate Interests of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interests in the Domain Name. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services given its confusing use and is not commonly known by the Domain Name or making non commercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion here below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a Domain Name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a Domain Name equivalent to the Complainant’s well-known trade marks with only a generic term added reflecting the type of goods the Complainant sells and then post on the site attached to the Domain Name images of the Complainant's products, use the Complainant's trade mark on the site and within the metatags for the site and post links to a third party site offering competing products.
The use of the images and trade marks on the site shows that the Respondent is well aware of the Complainant, its trade mark and products.
In the absence of a Response from the Respondent, considering the fame of the Complainant and the nature of the material attached to the Domain Name the Panel is satisfied that the Complainant has shown that the Respondent has registered the Domain Name in bad faith. It has also used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant by using a Domain confusingly similar to the Complainant’s mark, using the Complainant’s trade mark in the metatags and featuring the Complainant's products on the site without authorisation as a means to drive traffic to third party sites offering competing third party products. As such, the Domain Name has been both registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <revlon-foundations.com> be transferred to the Complainant.
Dated: July 28, 2011