WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. David Woo / Above.com Domain Privacy
Case No. D2010-1483
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented by Steven Rosenthal and Erica Swartz, United States of America.
The Respondents are David Woo of Hong Kong, Hong Kong, SAR of China; Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <revlone.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2010. On September 3, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 6, 2010, Above.com, Inc. 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 the Complainant on September 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 9, 2010.
The Center verified that the Complaint together with the amendment to 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 September 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2010.
The Center appointed Anna Carabelli as the sole panelist in this matter on October 13, 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
Since 1932, the Complainant has been manufacturing and selling cosmetics under the trademark REVLON. The REVLON name and house mark is a fanciful combination of the surnames of the company founders, Charles and Joseph Revson and Charles Lachman.
The mark is protected as a registered trademark in the United States and abroad. Annexed to the Complaint are copies of several Complainant’s trade mark registrations in the United States, in Australia and in Hong Kong, for inter alia cosmetics and personal care products.
REVLON products are sold in about 175 countries worldwide and the REVLON brand is heavily advertised and promoted internationally through television and print advertisements, featuring prominent celebrities such as actors, singers and models. Annexed to the Complaint are copies of print advertisements featuring the REVLON trademark in various magazines, covering a period from the early 1960s to the present.
The Complainant has maintained a presence on the internet since May 1997 when its own website was launched; annexed to the Complaint is a copy of the current home page at “www.revlon.com”.
The Complainant owns at least 200 domain names incorporating the REVLON trademark and variations thereof.
The Respondent’s domain name was registered on November 28, 2009 as shown by a copy of the Registrar’s WhoIs database annexed to the Complaint. In April, May and August 2010, the Complainant requested the Respondent to cease and desist from further use of the domain name; the Respondent did not respond to the Complainant’s letters that are annexed to the Complaint and were all sent to the Respondent at the contact e-mail listed as the Administrative Contact in the WhoIs search result.
The domain name opens to a website featuring several sponsored links to competitors of the Complainant; printouts of April 15, 2010 and September 2, 2010 of the Respondent’s website are annexed to the Complaint.
5. Parties’ Contentions
The Complainant contends that the domain name is confusingly similar to its registered trademark, REVLON since it includes the REVLON mark in its entirety. The Complainant argues that the non-distinctive domain name suffix <.com> and the mere addition of the letter”e” will not avoid confusion. In this connection the Complainant refers to previous NAF decisions stating the principle that the misspelling of a trademark is sufficient to establish that a domain name is confusingly similar.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the domain name. The Complainant has no relationship with the Respondent and has not authorized it to use the REVLON mark. The Respondent can reasonably be presumed to have known of the internationally famous REVLON brand when the domain name was registered given the distinctiveness and international reputation of the REVLON trademark. Before notice to it of the dispute, the Respondent was not using the domain name in connection with a bona fide offering of goods or services, was not commonly known by the domain name, and was not making any legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the REVLON mark.
The Complainant states that the domain name was registered and is being used in bad faith given that: (a) the REVLON trademark is a famous and coined term as recognized in many prior UDRP proceedings commenced by the Complainant to protect its REVLON trademark referred to in the Complaint; (b) by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website.
In addition based on the registrant’s contact information disclosed by the Registrar following the Center’s verification request (the registrant has been identified as a David Woo having the following phone number +852 12345678 which appears to be false given the order of the numbers), the Complainant believes that the Respondent has falsified the administrative contact information, which fact has been held by previous panels as evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the mark REVLON in the United States, in Australia and in Hong Kong in respect of cosmetics and related products and services.
The domain name is confusingly similar to the Complainant’s trademark, as it incorporates REVLON.
The suffix <.com> has no legal significance when comparing domain names and the addition of an “e” cannot serve to distinguish. This line of reasoning is well-established. Numerous other panels have found that domain names which differ from a trademark by only minor variations have a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive and there is a close similarity both aurally and visually between the domain names and the complainant’s mark (Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441; Encyclopedia Britannica, Inc. v. John Zuccarini, WIPO Case No. D2000-0330; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Hewlett-Packard Co. v. Cupcake City, NAF File No. FA000200093562; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362).
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name in relation to the three circumstances identified in paragraph 4(c) of the Policy, namely: (i) bona fide prior use; (ii) common association with the domain name and (iii) legitimate non-commercial use. The Respondent did not exercise its right to respond in these proceedings thus failing to rebut the prima facie case made by the Complainant (or advance any other argument supporting rights or legitimate interests).
Accordingly the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the international reputation of the REVLON mark, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s well-known REVLON trade mark at the time it registered the disputed domain name (see Revlon Consumer Products Corp v. Domain Manager WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc. WIPO Case No. D2004-0071; Revlon Consumer Products Corp. v. Easy Weight Loss Info WIPO Case No. D2010-0936).
The website at the disputed domain name features sponsored links to competitors of the Complainant, presumably on a “pay per click” basis. Applying the comments of numerous other panelists (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, Deutsche Telekom AG v. Keyword Traffic, WIPO Case No. D2005-0443; Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062, Micro Electronics Inc. v. J. Lee, WIPO Case No. D2005-0170) the Panel finds that such a use does not constitute a bona fide offering of goods or services and that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his web site (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s mark.
Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy.
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 <revlone.com> be transferred to the Complainant.
Dated: October 27, 2010