WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Brian Dean
Case No. D2010-1858
1. The Parties
Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented by Erica J. Swartz and Steven Rosenthal, United States of America.
Respondent is Brian Dean of Cranston, Rhode Island, United States of America.
2. The Domain Name and Registrar
The disputed domain name <revlonnailpolish.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 3, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 3, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing Respondent’s 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 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 26, 2010.
The Center appointed Seth M. Reiss as the sole panelist in this matter on November 8, 2010. 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 has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932. REVLON is one of the world’s best-known names in cosmetics and beauty care products and is a leading mass-market global cosmetics brand. In 2009, Complainant’s net sales for beauty products were USD 1.2959 billion, with USD 747.9 million in net sales in the United States and USD 548 million in other countries around the world. Complainant sells REVLON branded products in approximately 175 countries through wholly-owned subsidiaries in 14 countries and through a large number of distributors and licensees elsewhere around the world.
The first product launched by Complainant was nail polish. Complainant produces and sells many nail polish and nail care products and continues to innovate with international launches of new nail polish and nail care products under the REVLON trademark.
The REVLON trademark is a fanciful combination of the names of Complainant’s founders: Charles and Joseph Revson and Charles Lachman, who contributed the “L” in the REVLON name. The term REVLON has no generic or descriptive meaning.
Complainant has spent hundreds of millions of dollars over several decades advertising and promoting REVLON branded products. In 2009 alone, Complainant spent USD 230.5 million in advertising its portfolio of products worldwide, with the majority of this amount being spent on the REVLON brand. Complainant advertises REVLON branded products on television, in print, on the Internet, and on point-of-sale materials. Complainant’s first print advertisement outside of trade journals appeared in 1935 in the magazine The New Yorker.
Complainant claims to have pioneered the use of celebrities in its advertising, featuring prominent actors, singers, and models, a number of whom are listed in the Complaint. Complainant has also sponsored numerous television programs and fundraising events. In the 1950s, for example, Complainant sponsored the popular television game show “The $64,000 Question,” and also sponsored “The Ed Sullivan Show.” Complainant has also sponsored the Academy Awards and has advertised during widely viewed televised events, such as the Super Bowl. Complainant currently sponsors the EIF Revlon Run/Walk for Women,
a well-known fundraiser to support women’s cancer research.
Complainant owns more than 350 domain names which incorporate the REVLON trademark and variations thereof. Complainant has maintained a presence on the Internet since May 1997, when its website at “www.revlon.com” was officially launched.
Complainant, or one of its subsidiaries, affiliates, or related companies, currently owns over 50 United States trademark registrations and/or pending applications for trademarks incorporating the REVLON term, dating from as early as 1957, and more than 2,600 trademark registrations and/or pending applications for trademarks incorporating the REVLON term worldwide.
The REVLON trademark is Complainant’s most valuable asset, and trademark protection is very important to Complainant’s business.
Respondent has no relationship with Complainant. Respondent has no permission from Complainant to use any REVLON trademark.
According to the WhoIs database, Respondent registered the disputed domain name on March 16, 2010. At the time the Complaint was filed, and also at the time of the Center’s compliance review, the disputed domain name pointed to a website that featured sponsored links to competitors of Complainant.1 The website text also included disclaimers which read:
This sites descriptions [sic] in no way denotes or infers a direct connection between this site and Revlon. Use of various companies [sic] names and product lines within this website exists only for descriptive and informational purposes and does not infer any direct connection between the this site and any company.
Revlon is TM of the Revlon Inc.
and
Legal Disclaimer: RevlonNailPolish.net is in no way affiliated with or sponsored by
Revlon Inc. The Revlon logo is a registered trademark of Revlon Inc. The use of Revlon names and their names, descriptions and/or numbers are used in applications and descriptions for reference purposes only.
In a letter dated September 16, 2010, Complainant requested that Respondent cease and desist from the further use of the disputed domain name. On September 25, 2010, Respondent provided an authorization code to Complainant in order to process the transfer of the disputed domain name; however, the transfer was not processed due to Respondent not confirming the transfer and the disputed domain name being locked. On October 13, 2010 and again on October 16, 2010, Complainant sent further correspondence to Respondent advising that the transfer was not successful and requesting that a new authorization code be obtained. Respondent provided a new authorization code on October 18, 2010 and again, on October 25, 2010, Complainant received a notice that the transfer of the disputed domain name could not be completed because either the disputed domain name was in "locked" status or the administrative contact failed to authorize the transfer. Since the transfer was unsuccessful several times, Complainant filed this UDRP proceeding.
5. Parties’ Contentions
A. Complainant
Complainant contends that the <revlonnailpolish.net> domain name is confusingly similar to Complainant’s REVLON 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.
Complainant submits that Respondent’s bad faith registration and use is firmly established by (1) the fame and distinctiveness of the REVLON mark; (2) the disputed domain name having resolved into a website that included links to websites offering products that compete with Complainant’s REVLON branded products; (3) Respondent having embedded Complainant’s REVLON mark in the invisible source code underlying Respondent’s website; (4) Respondent having provided false WhoIs information when registering the disputed domain name; (5) the disclaimers included by Respondent on his website; (5) Respondent having engaged in a pattern of conduct evidenced by Respondent having also registered the <almaycoupons.com> domain name incorporating Complainant’s ALMAY trademark (the subject of a concurrently filed UDRP proceeding); and (6) Respondent having maintained his website after having been placed on notice of Complainant’s objections.
The remedy requested by Complainant is to have the disputed domain name transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Trademark rights may be established in UDRP proceedings by registration and/or use. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Questions 1.1 and 1.7. Complainant has provided this Panel with overwhelming evidence that Complainant holds valuable proprietary trademark rights in the fanciful word REVLON.
The incorporation of a trademark in its entirety is normally sufficient to establish that a domain name is identical or confusingly similar to a complainant’s mark. Revlon Consumer Products Corp. v. IONE Inc., WIPO Case No. D2010-1000. The addition of a generic top-level domain (gTLD) designation ending like “.net” does not distinguish the domain name from the mark it incorporates because the ending is recognized as merely functional and does not avoid likely confusion. Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013.
The addition of descriptive or generic terms to a trademark will generally not distinguish the disputed domain name from the mark and, in appropriate circumstances, may actually increase the likelihood of confusion. LEGO Juris A/S v. Private Registration / Dophe Dot., WIPO Case No. D2009-0753. Here, the addition of the generic term “nail polish” to Complainant’s REVLON mark functions to increase the likelihood of confusion because “nail polish” describes one of the products that Complainant is most famous for. Revlon Consumer Products Corp. v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936 (“[T]he addition of the descriptive word ‘beauty’ to the Complainant's REVLON trade mark, by referencing the goods for which the mark is known, increases the likelihood of confusion.”)
The Panel is persuaded that the first element of the Policy is established.
B. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, . . . complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests[,] [o]nce such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1.
According to Complainant, Respondent has no relationship with Complainant, and Complainant never gave Respondent authorization or permission to use Complainant’s REVLON mark. There is no evidence of record that Respondent is known by the disputed domain name or is making a legitimate, noncommercial fair use of the disputed domain name. The disclaimers posted on Respondent’s website dispel any notion that Respondent may have been unaware of the proprietary rights held by Complainant in the REVLON mark. By choosing not to submit a response, Respondent forfeited the right to demonstrate some right or legitimate interest in the disputed domain name not apparent from the record.
This Panel is satisfied that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
This Panel agrees with Complainant that “[g]iven the highly distinctive and fanciful nature of the REVLON trademark and its use in connection with cosmetics and makeup . . . it is virtually inconceivable that the Respondent chose to register the Domain Name without being aware of the existence of the Complainant’s REVLON trademark and business.” Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (where a 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”).
Moreover the disclaimers posted by Respondent on his “www.revlonnailpolish.net” website demonstrate that Respondent registered and was using the disputed domain name with full knowledge of the valuable intellectual property rights belonging to Complainant inhering therein.
The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer is sometimes found to support other factors indicating good faith or legitimate interest.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.5. Because Respondent’s website was a commercial website offering for sale products in competition with the REVLON branded products sold by Complainant, and not one dedicated, for example, to criticism or comment, the disclaimers do not function to insulate Respondent from a finding of bad faith registration and use.
The record in the case makes clear2 that Respondent was using the REVLON trademark in the disputed domain name and on the website resolved by the disputed domain name to misappropriate the goodwill of Complainant and redirect Internet traffic intended for Complainant for Respondent’s own commercial purposes. This places the case squarely within paragraph 4(b)(iv) of the Policy, to wit, that Respondent “registered and is using the disputed domain name to intentionally attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with [Complainant’s REVLON mark] as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site.”
The Panel concludes that Complainant has met its burden of establishing the third and final element of the Policy.
7. Decision
For all 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 <revlonnailpolish.net> be transferred to Complainant.
Seth M. Reiss
Sole Panelist
Date: December 21, 2010
1 At the time of the preparation of this decision, the disputed domain name failed to resolve to a website.
2 Given the clarity of the evidence demonstrating opportunistic bad faith, it is unnecessary for this Panel to consider the other circumstances highlighted by Complainant as demonstrating Respondent’s bad faith registration and use.