WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. PrivacyProtect.org / Timmy Smith
Case No. D2011-2139
Complainant is Revlon Consumer Products Corporation (“Revlon” or “Complainant”) of New York, New York, United States of America (“U.S.”). internally represented.
Respondent is PrivacyProtect.org / Timmy Smith of Nobby Beach, Australia and Orlando, Florida, U.S., respectively (“Respondent”).
2. The Domain Name and Registrar
The disputed domain name <revlonamerica.com> (“Disputed Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 7, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 8, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 8, 2011, naming Timmy Smith as Respondent.
The Center verified that the Complaint together with the amended 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 December 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2012.
The Center appointed Michael A. Albert as the sole panelist in this matter on January 12, 2012. 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 Revlon has manufactured, marketed and sold beauty products under the REVLON trademark continuously since at least 1932. Together with its subsidiaries, Revlon sells products under the REVLON mark in approximately 175 countries through distributors and licensees. In 2010, Complainant’s net sales exceeded USD 1.3 billion worldwide.
Complainant is one of the world’s most famous names in the cosmetic and beauty care industry and owns a large portfolio of marks. Complainant and its subsidiaries, affiliates, or related companies, currently own over forty U.S. trademark registrations and pending trademark applications incorporating REVLON. See, e.g., United States Patent and Trademark Office Reg. No. 3035671; Annex 3 of the Complaint. Additionally, Complainant owns more than 2,600 trademark registrations and pending registrations worldwide for trademarks incorporating REVLON. These include Australian registrations. See, e.g., Commonwealth of Australia Trademarks Office Reg. No. 586929.
Several UDRP panels have found that Complainant’s trademark rights in REVLON are well-established and that REVLON is a famous mark. See, e.g., Revlon Consumer Products Corporation v. Jean Michel Druart, WIPO Case No. D2011-1527 (“Complainant owns numerous word trademarks which include the term ‘revlon’”); Revlon Consumer Products Corporation v. Mike Iser and WhoisGuard, WIPO Case No. D2010-1370. Indeed, Revlon has commenced and prevailed in over forty UDRP proceedings involving the REVLON mark to date. See Annex 5 of the Complaint. Additionally, Revlon owns more than 1,400 domain name registrations worldwide including more than 700 that incorporate the REVLON mark.
As Respondent did not file a response to Complainant’s contentions in these proceedings, the Panel finds that the assertions of fact in the Complaint are undisputed.
The Disputed Domain Name was registered on November 28, 2011.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith in order to deceive and defraud visitors of the website.
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s REVLON mark. Complainant further contends that the Disputed Domain Name creates confusion because it incorporates Complainant’s REVLON mark and adds the geographically descriptive term “america.” Complainant asserts that the addition of the generic top-level domain (gTLD) “.com” does not avoid confusion.
Complainant contends that it has no relationship with Respondent and has not authorized Respondent to use the REVLON trademark. Complainant argues that Respondent had constructive knowledge of the REVLON mark through its worldwide trademark registration. Complainant further contends that Respondent’s sole reason for registering the Disputed Domain Name is to attract Internet visitors to the website by creating confusion with the REVLON mark. Complainant contends that Respondent uses this intentionally created confusion as part of an illegal phishing scam and that, as part of the scam, Respondent includes the Disputed Domain Name in a link in an e-mail sent from an alleged Revlon recruiter offering a fictitious job. See Annex 11 of the Complaint. The email directs the recipient to log on to a credit reporting website and that completion of a credit check by the service will allow the job offer to become final. This website, “www.creditreportconnection.net”, was registered on December 1, 2011, only two days after the Disputed Domain Name was registered, and does not appear to be legitimate. See Annex 1 of the Complaint. Complainant contends that Respondent uses this website to obtain financial information from users it has attracted by creating confusion with the famous REVLON mark.
Respondent did not reply to Complainant’s contentions.
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.”
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Respondent provided no response, and the deadline for doing so expired on December 29, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
A. Identical or Confusingly Similar
Complainant provides sufficient evidence that it is the owner of valid and subsisting international registrations and rights at common law for the REVLON mark. Complainant’s registrations for the mark in the U.S. and worldwide (examples of registrations are offered into evidence in Annex 3 accompanying the Complaint), taken together with it’s longstanding, extensive worldwide use of the REVLON mark, make such ownership of enforceable trademark rights indisputable. Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (“[R]egistration of a mark is prima facie evidence of validity […] Respondent has the burden of refuting this assumption.”); EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent provides no evidence to refute the conclusion that Complainant possesses valid and enforceable trademark rights.
Complainant contends that the Disputed Domain Name is confusingly similar to the REVLON mark. The Disputed Domain Name, however, is not identical to the REVLON mark. Therefore, the first issue is whether the Disputed Domain Name and the REVLON mark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the mark “revlon”; (2) the geographically descriptive term “america”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “revlonamerica”), as it is well established that the top-level domain should typically not be included in the analysis. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
This Panel agrees that the Disputed Domain Name is confusingly similar to the REVLON mark. Several previous UDRP panels have held that incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainant’s mark. See, e.g., Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The establishment of confusion is particularly true where, as here, the trademark is famous. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.
Further, the addition of a geographically descriptive term to a famous trademark does not avoid confusion. Here, Respondent has added the term “america” to the famous REVLON mark. This does not negate the likelihood of confusion that results and may add to the confusion because Complainant’s corporate headquarters are located in the U.S. See Revlon Consumer Products Corporation v. Zeng Wei, WIPO Case No. D2010-1567 (finding that the addition of “Japan” to the REVLON mark adds to confusion because Complainant has an affiliate located in Japan); Inter-Continents Hotels Corporation, Six Continental Hotels, Inc. v. Daniel Kirchof, WIPO Case No. D2009-1661 (finding <holiday-exp-stes-lebanon.com> confusingly similar to HOLIDAY INN EXPRESS); Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106. Several UDRP panels have held that adding a geographic location to a mark increases the likelihood of confusion because it is a common way to indicate the location of a business. See ELS Educational Services, Inc. v. Domaincar, WIPO Case No. D2005-1348 (<els-europe.net> is confusingly similar to the ELS mark); Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244 (“[t]he addition of the city ‘Atlanta’ to Complainant’s trademark adds to rather than diminishes the likelihood of confusion”).
Therefore, this Panel finds that the Disputed Domain Name <revlonamerica.com> is confusingly similar to the REVLON mark.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
This Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has not filed a response, which, in appropriate circumstances after a prima facie showing by Complainant, can suggest that Respondent lacks rights or legitimate interests as to that domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interests in the contested domain name).
Next, as a result of not filing a response, Respondent has failed to dispute Complainant’s showing that Respondent has not demonstrated any of the factors under the Policy. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized to use the Disputed Domain Name. There is no evidence that Respondent is commonly known by the Disputed Domain Name, nor that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Conversely, Complainant’s evidence suggests that Respondent is using the Disputed Domain Name as part of a phishing scam to obtain financial records from Internet users. Clearly, intentionally confusing Internet visitors for financial gain cannot constitute a bona fide offering of services. See Hoffman-La Roche Inc. v. Igor Richko, WIPO Case No. D2010-0904; Tiffany (NJ) LLC, Tiffany and Company v. Thomas Stanek, WIPO Case No. D2009-0143.
Therefore, this Panel finds that Complainant has established prima facie evidence that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent, by not responding to the Complaint, has failed to rebut the prima facie case.
C. Registered and Used in Bad Faith
Under the Policy, paragraph 4(a)(iii), registration and use of a domain name in bad faith may be demonstrated by showing:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
For the following reasons, this Panel finds that Complainant’s evidence shows that Respondent has registered and used the Disputed Domain Name in bad faith in violation of the Policy.
First, REVLON is a famous, coined mark. The REVLON mark is highly distinctive and fanciful and has been in continuous use for over 75 years worldwide. Given the well-known status of the mark, and Respondent’s use of the mark as part of an illegal phishing scam, this Panel finds it inconceivable that Respondent was not aware of Revlon and its international business. See Wal-Mart Stores, Inc. v. Jeff Milchen, WIPO Case No. D2005-0130 (Finding that respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith); Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071; Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602.
In addition, this Panel finds that Respondent has no rights with respect to the Disputed Domain Name, as discussed above. UDRP panels have found that registration and use of a famous trademark belonging to complainant, without proving rights or legitimate interests in it, represents bad faith registration and use. See, e.g., DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (The disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”)
Furthermore, the Disputed Domain Name includes the entire REVLON mark. This supports a finding of bad faith. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
Finally, Respondent is using Complainant’s goodwill and the reputation of the REVLON mark to redirect Internet users to obtain confidential financial information. Many UDRP panels have found that intentionally creating confusion with a famous mark for financial benefit is evidence of bad faith registration and use. See, e.g., Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.
Therefore, this Panel finds that Complainant has demonstrated that the Disputed Domain Name was 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, <revlonamerica.com> be transferred to Complainant.
Michael A. Albert
Dated: January 24, 2012