WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation v. Fundacion Private Whois

Case No. D2012-1276

1. The Parties

The Complainant is Revlon Consumer Products Corporation, New York, New York, United States of America, represented by Steven Rosenthal, United States of America.

The Respondent is Fundacion Private Whois, Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <revlonphotoreadyfoundation.com> (the “Domain Name”) is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 22, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the Domain Name. On June 24, 2012, Internet.bs Corp. 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 July 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2012. Apart from two brief emails received by the Center on July 3 and July 4, 2012, no official Response was filed with the Center. Accordingly, the Center notified the parties about commencement of panel appointment process on July 25, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on August 2, 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 has manufactured and sold beauty products under the Revlon name for over 75 years. Together with its subsidiaries, distributors and licensees the Complainant sells Revlon products in approximately 175 countries. In 2011, the Complainant’s net sales were USD 1.3814 billion worldwide and it spent over USD 271.4 million advertising its products.

The Complainant is the holder of numerous registered trade marks for the coined word “revlon” (the “REVLON Mark”) which it has used since 1932. The Complaint owns at least 2,600 trademark registrations worldwide containing the REVLON Mark, including in Panama, the location of the Respondent. The Complainant also holds a trade mark for the coined phrase REVLON PHOTOREADY (the “REVLON PHOTOREADY Mark”) which is registered in 20 countries around the world and has been in use since 2010.

The Domain Name <revlonphotoreadyfoundation.com> was created on November 22, 2011. It does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the REVLON and REVLON PHOTOREADY Marks. It owns at least 2,600 trademark registrations worldwide containing the word “revlon”, including registrations of the REVLON Mark in Panama. By reason of the extensive advertising and promotion of the REVLON Mark, the REVLON Mark has become a well-known mark, as found in Revlon Consumer Products Corporation v. PrivacyProtect.org / Timmy Smith, WIPO Case No. D2011-2139; Revlon Consumer Products Corporation v. Swaleheen Akhtar, WIPO Case No. D2011-1156; and Revlon Consumer Products Corporation v. Saun jang, WIPO Case No. D2011-0625. The Complaint has also promoted products for sale under the REVLON PHOTOREADY Mark.

The Domain Name consists of the REVLON PHOTOREADY Mark in its entirety with the addition of the descriptive term “foundation”. The suffix “foundation” should be disregarded because “foundation” is a category of products the Complainant produces and sells under both the REVLON and REVLON PHOTOREADY Marks. In the case of LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753, the panel found that the addition of a term that is generic or descriptive of the complainant’s products is likely to produce more confusion since it creates an obvious association with the complainant. The Domain Name is confusingly similar both to the REVLON and REVLON PHOTOREADY Marks.

There are no rights or legitimate interests held by the Respondent in respect to the Domain Name. The Respondent has no relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent appear to have any trade or service mark rights. The Respondent has not used the Domain Name for a bona fide offering of goods and services, nor has it made a legitimate noncommercial or fair use of the Domain Name.

The Domain Name was registered and is being used in bad faith. The REVLON Mark is a famous and coined term and the REVLON PHOTOREADY Mark is a highly distinctive and fanciful mark. It is inconceivable that the Respondent chose to register the Domain Name without being aware of the existence of the REVLON and REVLON PHOTOREADY Marks. The Respondent has also continued to maintain its registration of the Domain Name after receiving notice of the Complainant’s rights in the REVLON and REVLON PHOTOREADY Marks. Such continued use of the Domain Name amounts to registration and use of the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. On July 3, 2012 and July 4, 2012, Nigel Catell, an individual who either registered the Domain Name or is connected with the Respondent, sent two short emails to the Center. They are extracted below in their entirety.

July 3, 2012

“This Domain name has never been used and has never been active

Yours Sincerely

N. R . Cattell”

July 4, 2012

“Should not the person who allowed me to register this domain in the first place bear some if not all of the responsibility for this farce?”

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the REVLON PHOTOREADY Mark, having registrations for the word REVLON PHOTOREADY as a trade mark.

The Domain Name consists of the REVLON PHOTOREADY Mark and the suffix “foundation”. The term “foundation” is a descriptive term that can be used to describe a make-up product produced by the Complainant. As noted in LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753, the addition of a term that is generic or descriptive of the complainant’s products is likely to produce more confusion since it creates an obvious association with the complainant. As such the addition of the suffix “foundation” does not distinguish the Domain Name from the REVLON PHOTOREADY Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s REVLON PHOTOREADY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the REVLON and REVLON PHOTOREADY Marks or a mark similar to the REVLON and REVLON PHOTOREADY Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.

The communications made by or on behalf of the Respondent, acknowledging that the Domain Name has never been used and never been active, support the conclusion that the Respondent has not been using the Domain Name for a bona fide offering of goods or services or for a legitimate noncommercial use.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the REVLON and REVLON PHOTOREADY Marks at the time the Domain Name was registered. The REVLON Mark has been extensively promoted by the Complainant around the globe, making it a well-known mark. Furthermore, both Marks are coined terms with no descriptive and generic meaning and as such nobody would choose the combination of words unless seeking to create an association with the Complainant. The Domain Name combines the REVLON PHOTOREADY Mark with a word that describes one of the products produced by the Complainant, indicating an awareness of the Complainant and its products. Finally, the Respondent has provided no alternative explanation, either in this proceeding or in correspondence with the Complainant, for its registration of the Domain Name.

The registration of the Domain Name in awareness of the Complainant’s REVLON and REVLON PHOTOREADY Marks and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Domain Name is currently inactive, and there is no evidence that it has been used by the Respondent for any purpose. It is, in essence, being passively held by the Respondent. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.

A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:

a) The Respondent was aware of the Complainant at the time it registered the Domain Name;

b) The Domain Name reproduces a well-known mark;

c) The Respondent has acknowledged that the Domain Name has never been used and never been active, and;

d) The Respondent has failed to respond to this proceeding in any significant manner or to the initial cease and desist letters sent by the Complainant.

On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name <revlonphotoreadyfoundation.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: August 7, 2012