World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation v. Effluvium Jaoua, Bestware

Case No. D2011-1945

1. The Parties

Complainant is Revlon Consumer Products Corporation of New York, United States of America, represented internally.

Respondent is Effluvium Jaoua, Bestware of United States of America.

2. The Domain Names and Registrar

The disputed domain names <revloncolorsilk.info> and <revloncolorsilk.org> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2011. On November 8, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On November 8, 2011, eNom transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 7, 2011.

The Center appointed Sandra J. Franklin as the sole panelist in this matter on December 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

Complainant is the owner of the well-know trademarks REVLON and COLORSILK, and uses those trademarks worldwide to sell beauty products. Complainant began using REVLON in 1932 and holds 40 trademark registrations with the United States Patent and Trademark Office (“USPTO”), and 2,600 other registrations worldwide, for that trademark. Complainant began using COLORSILK in 1964 and holds 5 USPTO trademark registrations, and 130 other registrations worldwide, for that trademark. Complainant also holds 700 domain name registrations with the REVLON trademark, and has operated the website “www.revlon.com” since 1997. Complainant holds 35 domain name registrations containing the COLORSILK trademark.

Respondent registered the disputed domain names <revloncolorsilk.info> and <revloncolorsilk.org> on August 16, 2011, and uses the domain names for websites displaying Complainant’s products and containing third-party links.

5. Parties’ Contentions

A. Complainant makes the following assertions:

1. The disputed domain names <revloncolorsilk.info> and <revloncolorsilk.org> are confusingly similar to Complainant’s REVLON and COLORSILK trademarks.

2. Respondent does not have any rights or legitimate interests in the disputed domain names <revloncolorsilk.info> and <revloncolorsilk.org>.

3. Respondent registered and used the disputed domain names <revloncolorsilk.info> and <revloncolorsilk.org> in bad faith.

B. Respondent failed to submit a Response in this proceeding.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA0006000095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (stating that in the absence of a response, it is appropriate to accept as true all allegations of the complaint.).

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name must be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 Panel finds that Complainant’s many USPTO and other trademark registrations, as well as its long-standing and widespread use, are conclusive evidence that Complainant has rights in the REVLON and COLORSILK trademarks for the purposes of Policy 4(a)(i). See AOL LLC v. Mark Interrante, NAF Claim No. FA0604000681239 (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy 4(a)(i)”); See Paisley Park Enterprises v. James Lawson, NAF Claim No. FA0412000384834 (finding that the complainant had established rights in the PAISLEY PARK trademark under paragraph 4(a)(i) of the Policy through registration of the trademark with the USPTO).

The disputed domain names <revloncolorsilk.info> and <revloncolorsilk.org> are confusingly similar to Complainant’s REVLON and COLORSILK trademarks. Respondent’s use of two of Complainant’s trademarks in their entirety, merely removing a space between them and adding a generic top-level domain, is insufficient to distinguish the disputed domain names from Complainant’s trademarks. See Nintendo of America Inc v. Pokemon, WIPO Case No. D2000-1230 (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU trademarks to form the <pokemonpikachu.com> domain name); See Bond & Co. Jewelers, Inc. v. Texas International Property Associates, NAF Claim No. FA0703000937650 (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s trademark under paragraph 4(a)(i) of the Policy).

The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant shoulders the burden of presenting a prima facie case. Once this burden has been satisfied, as is the case here, the burden then shifts to Respondent to refute Complainant’s claims. See Swedish Match UK Limited v. Admin, Domain,NAF Claim No. FA0612000873137 (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy). Some panels have concluded that a respondent’s failure to submit a response is per se evidence that respondent lacks rights or legitimate interests in the disputed domain name. See America Online, Inc. and AOL International, WIPO Case No. D2000-0654 (finding no rights or legitimate interests where the respondent fails to respond). Here, however, the Panel will examine the record to determine if such rights or legitimate interests do exist under paragraph 4(c) of the Policy.

Complainant alleges that Respondent is not commonly known by the disputed domain names <revloncolorsilk.info> and <revloncolorsilk.org> for purposes of paragraph 4(c)(ii) of the Policy. The relevant WhoIs information identifies the registrant for the disputed domain names as “Effluvium Jaoua, Bestware”, which the Panel finds to bear no resemblance to the disputed domain names. Complainant states that it has no relationship with Respondent. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names <revloncolorsilk.info> and <revloncolorsilk.org> for the purposes of paragraph 4(c)(ii) of the Policy. See Tercent Inc. v. Lee Yi, NAF Claim No. FA0301000139720 (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that paragraph 4(c)(ii) of the Policy does not apply); See The Braun Corporation v. Wayne Loney, NAF Claim No. FA0605000699652 (concluding that the respondent was not commonly known by the disputed domain names where the WhoIs information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered trademark).

Complainant further alleges that Respondent’s use of the disputed domain names does not represent a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to display third-party links is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. See Constellation Wines U.S., Inc. v. Texas International Property Associates, NAF Claim No. FA0703000948436 (finding that the respondent had no rights or legitimate interests under paragraphs 4(c)(i) or 4(c)(iii) of the Policy by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); See TM Acquisition Corp. v. Sign Guards a/k/a William Moore, NAF Claim No. FA0211000132439 (finding that the respondent’s diversionary use of the complainant’s trademarks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered and uses the confusingly similar disputed domain names to host third-party links, and no doubt receives click-through fees from the links. Such use is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. See Allianz of America Corporation v. Lane Bond, NAF Claim No. FA0604000680624 (finding bad faith registration and use under paragraph 4(b)(iv) of the Policy where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); See DatingDirect.com Limited v. Wayne Aston, NAF Claim No. FA0511000593977 (The panel held that the respondent was appropriating the complainant’s trademark in a confusingly similar domain name for commercial gain, which was determined to be evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy).

Complainant also contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the REVLON and COLORSILK trademarks. Complainant states that Respondent displays images of Complainant’s products, demonstrating that Respondent is aware of Complainant and its trademarks. To this Panel, while constructive notice does not by itself suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain names in bad faith under paragraph 4(a)(iii) of the Policy because Respondent had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC. c/o Manish Patel, NAF Claim No. FA0602000648190 (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s trademark when it registered the disputed domain name, panels can find bad faith); See Yahoo! Inc. v. Craig Butler,NAF Claim No. FA0607000744444 (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! trademark at the time of registration).

Finally, Respondent also provided misleading address information, showing “VD” even though there is no corresponding state with that abbreviation, and “1110” even though there is no corresponding zip code. This is further evidence of bad faith. See Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024.

The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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 names <revloncolorsilk.info> and <revloncolorsilk.org> be transferred to Complainant.

Sandra J. Franklin
Sole Panelist
Dated: December 26, 2011

 

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