WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. David Corrick / Through The Glass Media Ltd.
Case No. D2011-1545
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America represented by Steven Rosenthal, United States of America.
The Respondent is David Corrick / Through The Glass Media Ltd. of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <almaylipstick.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2011. On September 15, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 15, 2011, GoDaddy.com, Inc. 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 September 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2011.
The Center appointed Andrew F. Christie as the sole panelist in this matter on October 17, 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 and its predecessors, affiliates, subsidiaries and related companies have manufactured, marketed and sold beauty products under the ALMAY trademark continuously since 1931. In 2010 the Complainant had many millions of dollars in net sales of Almay products, including lipsticks, around the world. The word “Almay” is a combination of the names Alfred, the chemist who in 1930 helped devise a formula for cosmetics, and Fannie May, his wife who found make up products were irritating her skin. In 1987, the ALMAY brand was acquired by the Complainant and has since expanded to a full line of skincare, cosmetic and makeup products. The Complainant currently owns more than 1,400 domain name registrations worldwide, of which over 95 incorporate the ALMAY trademark and variations thereof. The Complainant or one of its subsidiaries, affiliates, or related companies currently owns over 400 registrations or pending applications worldwide, including in New Zealand, for trademarks incorporating ALMAY.
The disputed domain name was registered on October 14, 2010. It resolves to a website that features sponsored links to competitors of the Complainant, and it incorporates the ALMAY mark in text throughout the website.
5. Parties’ Contentions
The Complainant contends that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s mark. The addition of “.net” is non-distinctive because it is a generic top-level domain designation for registration of a domain name and does not avoid likely confusion. The addition of the generic term “lipstick” adds to the likelihood of confusion because the Complainant sells many cosmetic and makeup products, including lipstick, under the ALMAY trademark.
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Respondent has no relationship with the Complainant and has not been authorized to use the ALMAY trademark; (ii) the Respondent had constructive knowledge of the Complainant’s rights because the disputed domain name was registered well after many of the Complainant’s trademark registrations were issued; (iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, because the website to which it resolves contains the Complainant’s trademark in text as well as links to competitors of the Complainant, and is therefore trying to confuse customers of the Complainant; (iv) the Respondent has not been commonly known by the disputed domain name; and (v) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain.
The Complainant contends the disputed domain name has been registered and is being used in bad faith because: (i) it is virtually inconceivable that the Respondent chose to register the disputed domain name without being aware of the existence of the Complainant’s ALMAY trademark given its highly distinctive and fanciful nature; (ii) the Respondent is using the ALMAY trademark to misappropriate the goodwill of the Complainant and redirect Internet traffic intended for the Complainant for its own purposes; (iii) the Respondent deliberately embedded the Complainant’s ALMAY trademark more than 10 times in the source code underlying the website to which the disputed domain name resolves, which demonstrates the Respondent’s awareness of the ALMAY trademark and its conscious effort to divert Internet traffic away from the Complainant; and (iv) the Respondent has ignored the Complainant’s objections to the disputed domain name in the cease and desist letters the Complainant has sent the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s trademark ALMAY, and adds the descriptive word “lipstick”. The addition of the word “lipstick” only serves to increase the inevitable confusion of the disputed domain name with the Complainant’s trademark as the Complainant sells lipstick, amongst other beauty products, under its ALMAY trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not provided any evidence that it has been commonly known by the disputed domain name. The Respondent registered the disputed domain name many decades after the ALMAY trademark was first registered. Although the website to which the disputed domain name resolves contains information about the Complainant’s products, it also contains reference to products of the Complainant’s competitors and sponsored links to websites relating to products of the Complainant’s competitors. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods and services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant or a predecessor in title has conducted a substantial business internationally for many decades under the trademark ALMAY. This Panel is persuaded that the Respondent was likely aware of the Complainant’s trademark when it registered the disputed domain name. Moreover, this Panel is persuaded that the Respondent has used the disputed domain name with the intention of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. Pursuant to paragraph 4(b)(iv) of the Policy, this Panel finds that the disputed domain name has been registered and is being 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 disputed domain name, <almaylipstick.net>, be transferred to the Complainant.
Andrew F. Christie
Dated: October 31, 2011