WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Kalle Anka
Case No. D2012-2019
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented internally.
The Respondent is Kalle Anka of Norden, Norway.
2. The Domain Name and Registrar
The disputed domain name <revlonnailename.info> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 15, 2012, the Registrar 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 October 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2012.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 21, 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
The Complainant is a United States corporation which has manufactured and sold cosmetic and beauty products under the trademark REVLON since 1932.
The Complainant is the owner of numerous trademark registrations for the mark REVLON in various jurisdictions including, for example, US trademark registration number 2,886,630 registered on September 21, 2004 in International Class 3, for goods and services including artificial nails and related products.
The Domain Name was registered on March 30, 2012.
At the date of the Complaint, the Domain Name did not resolve to any active website.
5. Parties’ Contentions
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant relies on its United States and other trade mark registrations referred to above.
The Complainant states that the name Revlon is a conjunction of the names of its two founders, Revson and Lachman. It is an invented term and has no generic or descriptive meaning.
The Complainant states that it has used the mark REVLON in connection with beauty products continuously since 1932 and that Revlon is one of the best known names in the world for cosmetic and beauty products. The Complainant sells its products in approximately 175 countries and its net sales worldwide in 2011 were in the region of USD 1.4 billion . It spent USD 271 million on advertising in the same year, promoting its portfolio of products worldwide on TV, in print, on the Internet and elsewhere. Many well-known celebrities have been involved in this advertising. The Complainant has had an Internet presence since 1997 and owns more than 700 domain names which incorporate or use the REVLON mark.
The Complainant’s goods include nail enamel products.
The Complainant submits that the Domain Name incorporates the Complainant’s REVLON mark together with the descriptive term “nailename”, which can be assumed to mean “nailenamel” with only the final “l” missing. The addition of a descriptive term of this kind is not sufficient to dispel the confusion caused by the use of the name REVLON in the Domain Name. Indeed, a descriptive term which refers to one of the Complainant’s products simply adds to that confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant states that the Respondent has no connection with the Complainant and that the Complainant has at no time authorized the Respondent to use its REVLON mark.
The Complainant further submits that there is no contention by the Respondent or other evidence that, before becoming aware of the dispute, the Respondent used the Domain Name in connection with a bona fide offering of goods or services, that it has ever been known by the Domain Name, or that it has made legitimate noncommercial or fair use of the Domain Name.
The Complainant submits that the Domain Name was registered and is being used in bad faith.
In particular, the Complainant relies on the fame of the REVLON mark and submits that it is virtually inconceivable that the Respondent was unaware of the mark at the date of registration of the Domain Name. The Complainant contends that the Respondent must have acquired the Domain Name with the intention of misappropriating the Complainant’s goodwill.
The Complainant repeats its contentions in respect of “rights or legitimate interests”. The Complainant relies on previous UDRP panel decisions to the effect that the registration and use of the famous trademark without showing any such rights or legitimate interests is in itself indicative of bad faith.
The Complainant also refers to correspondence with the Respondent concerning the Domain Name and states that the Respondent failed to reply to a letter dated July 25, 2012 demanding a transfer of the Domain Name.
Finally, the Complainant submits that the Respondent has submitted false contact details in respect of the Domain Name. In particular, the Complainant alleges that the city, street name and postal code provided by the Respondent in Norway are incorrect or non-existent. This too has been held in previous UDRP panel decisions to indicate bad faith.
The Complainant requests a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case where the respondent has failed to reply to the complaint, it is still necessary for the complainant to establish its case in respect of each of the above elements.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of trademark registrations for the mark REVLON in the US and elsewhere for goods and services including cosmetic and beauty products. It has also established to the satisfaction of the Panel that the mark REVLON enjoys a high degree of fame worldwide for products of this kind.
The Panel accepts the Complainant’s contention that the mark REVLON is an invented term which has no generic or descriptive meaning.
The Domain Name comprises the term “revlon” together with the term “nailename” and the suffix “.info”. The Panel accepts the Complainant’s contention that the second part of the Domain Name can be assumed to comprise the term “nailenamel” with the final “l” missing. The Panel agrees with the Complainant’s contention that the addition of the term “nailename” does nothing to dispel the confusion caused by the adoption of the Complainant’s mark REVLON and that, on the contrary, it adds to the confusion in view of the cosmetic product to which it appears to refer.
In the circumstances, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has pointed to the Respondent’s adoption of its famous mark REVLON for the purpose of the Domain Name and states that it has no connection with the Respondent and has not authorized the Respondent to make any such use of its mark. In the view of the Panel this is sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent has failed to reply to the Complaint and has not therefore provided any evidence of rights or legitimate interests in the Domain Name, whether in accordance with the guidance provided in paragraph 4(c) of the Policy or otherwise. Nor does any other evidence of rights or legitimate interests on the part of the Respondent appear from the material available to the Panel.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant must prove both that the Domain Name was registered and that it has been used in bad faith.
So far as registration is concerned, the Panel readily infers bad faith from the Respondent’s adoption of the Complainant’s famous mark REVLON and the additional term “nailename”. In the view of the Panel the Respondent can have had no realistic intention in registering the Domain Name other than to take unfair advantage of the Complainant’s goodwill in the mark.
So far as use is concerned, there is no evidence that the Respondent has used the Domain Name to resolve to any active website or otherwise. However, it has been well established by previous UDRP panels that the passive holding of a domain name may nevertheless amount to use in bad faith and that all the circumstances of each individual case must be examined.
In this case, the Panel accepts that the Respondent’s choice of a name that incorporates the Complainant’s famous mark can have no reasonable explanation other than to impersonate the Complainant and take advantage of its valuable goodwill. In these circumstances, the Panel finds that even the passive holding of the Domain Name amounts to bad faith use.
The Panel also takes account of the Respondent’s failure to respond to communications from the Complainant concerning the Domain Name and the Complainant’s uncontradicted allegation that the Respondent has provided false contact details in connection with the Domain Name. Indeed, the Panel notes that the name of the Respondent is in fact the Swedish name for the cartoon character “Donald Duck”.
In the circumstances the Panel finds that the 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 Domain Name <revlonnailename.info> be transferred to the Complainant.
Steven A. Maier
Date: November 23, 2012