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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation v. Martin Canning

Case No. D2010-1251

1. The Parties

1.1 The Complainant is Revlon Consumer Products Corporation of New York, United States of America (the “Complainant”), represented by Steven Rosenthal, United States of America.

1.2 The Respondent is Martin Canning of Sutton Coldfield, United Kingdom of Great Britain and Northern Ireland (the “Respondent”).

2. The Domain Names and Registrar

2.1 The disputed domain names <revlondirect.com> and <revlondirect.net> (the disputed Domain Names”) are registered with Advantage Interactive Ltd (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010. On July 29, 2010, the Center transmitted by email to Advantage Interactive Ltd, a request for registrar verification in connection with the disputed Domain Names. On August 3, 2010, Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 August 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2010.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on September 1, 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

4.1 The Complainant is Revlon Consumer Products Corporation, a Delaware corporation, whose principal place of business is New York, New York, United States. The Complainant and its affiliates own the well known REVLON trademark which is registered around the world for cosmetics and related beauty care products and has been in use for over 75 years. The Complainant sells REVLON products in approximately 175 countries through wholly owned subsidiaries in 14 countries and through a large number of distributors and licensees. The Complainant’s net sales for 2009 were in the sum of USD 1.2959 billion. The Complainant’s parent company Revlon Inc. is also a publicly traded company listed on the New York Stock Exchange and is frequently referenced in financial and business publications and websites

4.2 The Respondent is from Sutton Coldfield, Great Britain and according to the WHOIS database both disputed Domain Names were registered by the Respondent on February 01, 2010.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant currently owns approximately 450 Domain Name registrations worldwide and more than 200 of these domain names incorporate the REVLON trademark and other variations. The Complainant states that it has maintained a presence on the Internet since May 1997 when its own website ”www.revlon.com” was launched. The Complainant also asserts that the REVLON trademark is its most valuable asset, thus trademark protection is very important to its business. The Complainant states that at the moment, it currently owns 50 United States trademark registrations and or pending applications for trademarks incorporating the REVLON trademark and more than 2,600 trademark registrations and or pending applications for trademarks incorporating the REVLON mark worldwide.

5.2 The Complainant contends therefore that the disputed Domain Names <revlondirect.com> and <revlondirect.net> are both confusingly similar and identical to the Complainant’s registered trademark, REVLON primarily because the disputed Domain Names wholly incorporate the REVLON trademark in its entirety. The Complainant further argues that the addition of the phrases “.com” and “.net” to the disputed Domain Names do not prevent likely confusion as both phrases are simply generic top-level domain designations for the registration of Domain Names. The Complainant in this regard, relies on a number of decided cases including the case of Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013.

5.3 The Complainant contends that the addition of descriptive, generic terms to a trademark, such as the Respondent has done in this case by the addition of the descriptive or generic word “direct” is generally not a distinguishing feature, but actually increases the likelihood of confusion since that addition suggests that there is some direct association with REVLON products. The Complainant in this regard also cites a number of decided cases including the case of Revlon Consumer Products Corporation. v. Domain Manager, Page UP Communications, WIPO Case No. D2003-0602, where the panel ordered the transfer of <revloncosmetics.info>, <revlonline.info>, and <revlonstore.info> to the Complainant.

5.4 The Complainant submits that the Respondent has no rights or legitimate interests in respect of any of the disputed Domain Names in that the Respondent has no relationship with the Complainant and that the Complainant has not authorized the Respondent to use the REVLON trademark. The Complainant submits further that the Respondent must have presumably had constructive knowledge of the Complainant’s trade mark rights because the registrations of the disputed Domain Names all took place well after the Complainant’s trademark registrations. In support of this contention the Complainant relies on the case of Kate Spade, LLC v. Darmstadler Designs, WIPO Case No. D2001-1384.

5.5 The Complainant further refers to the distinctiveness and international reputation of the REVLON trademark to assert that the Respondent has no rights with respect to Domain Names in support of this contention the Complainant relies on a number of cases including the case of Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291; and Beiersdorf AG v. Good Deal Communications, WIPO Case No. D2000-1759.

5.6 The Complainant finally submits that the Respondent’s use of the disputed Domain Names which in essence resolves to websites that feature sponsored links to websites of competitors of the Complainant, third party websites that sell products of the competitors of the Complainant and other unrelated third party websites does not constitute a bona fide offering of goods and services, as required by paragraph 4(c)(i) of the Policy; nor is there any indication or demonstration from the Respondent that the Respondent is commonly known by the disputed Domain Names as is required by paragraph 4(c)(ii) of the Policy; nor is there any evidence of legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. In this regard the Complainant relies on a number of cases including Mclaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No. 1230837.

5.7 With regards to registration and use in bad faith, the Complainant submits that the Respondent registered and is using the disputed Domain Names in bad faith for the following reasons: (a) such registration and use as carried out by the Respondent is in violation of section 8 of the Registrar’s Service Agreement which prohibits the registration and use of domain names in a manner which directly or indirectly infringes the legal rights of a third party; (b) in the light of the highly distinctive and fanciful nature of the REVLON trademark the Respondent must have registered the disputed Domain Names despite being aware of the prior existence of the Complainant’s REVLON trademark; (c) Panels have previously held that the mere registration and use of domain names which infringes famous trademarks belonging to others without proving any rights or legitimate interests in it represents bad faith registration and use; (d) the Respondent is using the REVLON trademark in the disputed Domain Names to redirect internet traffic intended for the Complainant for its own purposes; and (e) that despite sending several cease and desist letters the Respondent only replied on June 1, 2010 demanding the sum of £11.75 per domain name to effect the transfer of the two disputed Domain Names to the Complainant.

B. Respondent

5.8 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Names are 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 disputed Domain Names; (iii) and that the disputed Domain Names have been registered and are being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds on the facts as recounted by the Complainant and unchallenged by the Respondent that the disputed Domain Names, namely, <revlondirect.com> and <revlondirect.net> are confusingly similar to the well known worldwide REVLON trademark owned exclusively by the Complainant and its affiliates. Upon a studied comparison of the disputed Domain Names and the Complainant’s trademark it is patently obvious that the disputed Domain Names wholly incorporate the Complainant’s REVLON trademark. This Panel is satisfied, as the Complainant contends, that the addition of generic words such as “direct” and generic top-level domain designations such as “.com” and or “.net” do not in any way sufficiently distinguish the disputed Domain Names from the Complainant’s trademark and equally, do not prevent the likelihood of confusion in the minds of Internet visitors.

6.4 The Panel in arriving at these findings in paragraph 6.3 above, draws support from a number of decided cases cited by the Complainant, in particular the case of Revlon Consumer Products Corp. v. Domain Manager, Page UP Communications, WIPO Case No. D2003-0602 where the panel in that case, in similar circumstances as arising in this case, ordered the transfer of a number of domain names found to be confusingly similar to the Complainant’s trademark, namely, <revloncosmetics.info>, <revlonline.info> and <revlonstore.info>.

6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Names are confusingly similar to the Complainant’s REVLON trademark in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.6 The Panel finds that the Respondent has failed to provide any evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Names within the ambit of paragraph 4(c) of the Policy. There is undoubtedly a distinct lack of evidence of any relationship between the Complainant and the Respondent or evidence of consent or any license issued to the Respondent. The Panel is also satisfied that since the disputed Domain Names point to websites that feature sponsored links to websites of competitors of the Complainant or other unrelated third party websites, the Respondent has failed to adhere to the stipulated requirements necessary to establish the bona fide offering of goods and services as pronounced in the case of Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903, and contrary to Paragraph 4(c)(i) of the Policy.

6.7 In addition, the Panel is satisfied as the Complainant submits that the Respondent has failed to show that it is commonly known by the disputed Domain Names per paragraph 4(c)(ii) of the Policy or that there is any evidence of legitimate noncommercial or fair use per paragraph 4(c)(iii) of the Policy. The Panel finds that the Complainant’s reliance on the case of McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No. 1230837 is most relevant in the circumstances of this case, as the Panel in that case, held inter alia that in so far as it is the Complainant’s trademark that clearly attracts and diverts the attention of Internet visitors to other websites the use of the disputed Domain Names cannot represent a legitimate noncommercial or fair use under the Policy.

6.8 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Names in accordance with paragraph 4(a)(ii) of the Policy and that Respondent has not come forward to refute or challenge the Complainant’s evidence.

C. Registered and Used in Bad Faith

6.9 On the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Names in bad faith and used those disputed Domain Names in bad faith. The Panel has taken a number of unchallenged factors into account in arriving at this conclusion. First of all, the Panel finds that the Respondent knew or ought to have known of the Complainant’s worldwide exclusive rights in the REVLON trademark dating back to 1932 and the sale of the Complainant’s products in approximately 175 countries; including the United Kingdom where the Respondent is based, through wholly owned subsidiaries, a large number of distributors and licensees. The Respondent elected to register the disputed Domain Names in the year 2010. In this regard therefore, the Complainant is absolutely correct to assert that the Respondent is bound by the principle of constructive notice as propounded in the case of Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 and cannot feign ignorance of the existence of well known trademark rights owned and exercised by the Complainant and its affiliates. Second, the Panel has taken into account the failure of the Respondent to respond to numerous cease and desist letters written by the Complainant, except for a singular reply dated June 1, 2010 where the Respondent demands the sum of £11.75 per disputed Domain Name for the transfer of the Domain Names to the Complainant. Third, the unchallenged evidence from the Complainant is that the Respondent’s websites incorporating the disputed Domain Names i.e. “www.revlondirect.com” and “www.revlondirect.net” both resolve (and still do) to external websites selling cosmetic products including those of the Complainant’s competitors.

6.10 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy.

7. Decision

7.1 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 Names <revlondirect.com> and <revlondirect.net> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Dated: September 15, 2010

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