WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation and Revlon (Suisse) S.A. v. Run Wen
Case No. D2015-2132
1. The Parties
The Complainants are Revlon Consumer Products Corporation of New York, New York, United States of America and Revlon (Suisse) S.A. of Schlieren, Switzerland, represented internally.
The Respondent is Run Wen of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <revlonbuy.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2015. On November 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2015, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on November 30, 2015.
On November 26, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. Upon their request, an extension was granted to the Complainants to comment on the language of the proceeding. The due date for the Respondent to comment on the language of the proceeding was extended accordingly. On November 30, 2015, the Complainants submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on December 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on January 8, 2016. 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 Complainants and certain of their affiliates around the world are the owners of the REVLON trade mark and related trade marks such as REVLON PROFESSIONAL, and REVLON PHOTOREADY for cosmetics, hair care products, and related beauty care products. REVLON is a coined term that was created by its founders over 80 years ago and has no descriptive or generic meaning. The Complainants state that their Revlon products are sold in approximately 175 countries through a large number of distributors and licensees. Enormous goodwill is attached to the REVLON mark as a result of more than 80 years of continuous use and hundreds of millions of dollars spent on advertising and promotions around the world.
The Complainants have several licensees that manufacture and distribute REVLON-branded electric hair dryers, hair straighteners, curling irons, eyewear, false eyelashes, wigs and hairpieces in many countries around the world. The Complainants' parent company, Revlon Inc. is a publicly-traded company and is frequently referenced in news, financial and business publications and websites.
In 2014, the Complainants collectively had net sales in excess of USD 1.9 billion and over USD 375 million was spent in advertising their portfolio of products worldwide, with the majority spent in connection with Revlon products. The Complainants claim to have pioneered the use of celebrities in their advertising, featuring prominent actors, singers and models.
The Complainants own more than one thousand domain name registrations worldwide, more than half of which incorporate the REVLON trade mark and variations thereof.
The Complainants have maintained a presence on the Internet since May 1997 when their own website at "www.revlon.com" was officially launched. The Complainants' said website and other home page at "www.revlonprofessional.com" feature their current products and promotional information.
The Complainants own over 175 United States and Chinese trade mark registrations and/or pending applications for trade marks incorporating the REVLON trade mark. They also own approximately 2,700 trade mark and/or pending applications for trade marks incorporating the REVLON trade mark.
The disputed domain name was registered on November 12, 2014.
A cease and desist letter was sent to the Respondent on April 10, 2015. No response was received. Follow up correspondence was sent to the Respondent on four other occasions. The Respondent did not respond.
On November 25, 2015, a day after the original Complaint was filed, the Respondent changed the registrar.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainants' REVLON trade mark since it incorporates the Complainants' famous REVLON trade mark. The addition of the generic, descriptive term "buy" increases the likelihood of confusion and is not a distinguishing feature.
The Respondent registered the disputed domain name without the Complainants' authorization, and has no right or legitimate interest to use it. The Respondent has no relationship with the Complainants. The disputed domain name was registered well after many of the Complainants' trade mark registrations issued, including in China where the Respondent is located. The Respondent has not attempted to demonstrate that it has used the disputed domain name in connection with a bona fide offering of goods or services; that it has been commonly known by the disputed domain name; or that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the REVLON trade mark.
The Respondent registered and is using the disputed domain name in bad faith and this is evidenced by the following:
(a) the Respondent's holding out of itself to be a Revlon flagship store, when in fact its sales are not authorized by the Complainants;
(b) the Respondent's unauthorized, infringing use of several of the Complainants' advertisements, which are subject to copyright protection;
(c) the Respondent's use of metatags featuring the Complainants' trade marks (namely, the embedding of the REVLON trade mark over 100 times in the source code underlying the Respondent's website);
(d) the fame and distinctiveness of the Complainants' marks;
(e) the Respondent's unauthorized use of the Complainants' exact trade mark in the disputed domain name, with a descriptive word following the Complainants' trade mark;
(f) the Respondent's prominent use of the Complainants' mark REVLON PROFESSIONAL at the top of its web page, further giving the false impression that the website is somehow associated with the Complainants, when it is not;
(g) the lack of any legitimate purpose for registration other than an attempt to capitalize on the goodwill of Complainants' registered mark;
(h) the Respondent's ongoing use of the disputed domain name and infringing website, in blatant disregard of the Complainants' cease and desist letters;
(i) the Respondent's change of registrar immediately following the Complainants' filing of its original Complaint in this proceeding;
(j) the Respondent's unauthorized use of the Complainants' REVLON PROFESSIONAL trade mark on an online mass-market retail website, when the Complainants only use its REVLON PROFESSIONAL trade mark for certain products sold in the professional channel, e.g.,in salons; and
(k) the Respondent's repeated use of the Complainants' REVLON trade mark dozens of times on its infringing website, as well as unauthorized use of mis-spelled or otherwise infringing variations such as "Relon" and "Relove".
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Complaint was filed in English but the language of the Registration Agreement is Chinese. The Complainants requested that English be the language of the proceeding. The bases given were as follows:
(a) The disputed domain name combines the REVLON trade mark (a brand name coined in the United States in the 1930s and which has become a global brand) and the English word, "buy". The generic Top-Level Domain ("gTLD") ".com" is also in English. The disputed domain name does not incorporate any Chinese characters;
(b) The Respondent's website to which the disputed domain name resolves uses English and solicits business communications in English from the United States. This demonstrates the Respondent's ability to communicate in English. There is a "Live Chat" feature on the home page which says, amongst other things "Contact Us Live Chat"; its "Message Board" on the home page states in English "Please leave a message, we will promptly contact you, thank you! Please fill in contact […] Please enter the email – Send";
(c) the Respondents' use of the Complainants' English-language trade mark REVLON PROFESSIONAL as the most prominent term and "name" of its website;
(d) the Respondent's use of the heading "NEW PRODUCT" in English on its website;
(e) the Respondent's use of the phrase "Customer Center" in English on its website to attract business from English-speaking customers;
(f) the Respondent's unauthorized copying and use of an old webpage of the Complainants which is in English, which has words and phrases such as "lips", "eyes", "nails", "skin", "be a sta[r] this holid[ay]" and "Star in your own movie […] send it to a friend";
(g) English is the primary language of international business and the first language of the Internet;
(h) the Complainants' principal language is English: it would be costly, burdensome, and time consuming to the Complainants if they were required to translate the Complaint and Annexes into Chinese.
Paragraph 10(b) and (c) of the Rules state that the Panel is to ensure that the administrative proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel determines that English should be the language of the proceeding in this case. The Complainants have set out ample bases for their request and the Panel is persuaded that the Respondent is probably familiar with the English language. The presumption is rebuttable but the Respondent has not contested the Complainants' statements in this regard. Since all the communications from the Center to the parties were transmitted in both Chinese and English, the Respondent has been afforded the opportunity to present its case in this proceeding and to respond on the issue of the language of the proceeding. To require the Complainants to translate the Complaint and supporting evidence into Chinese would unduly delay the proceeding.
Having considered all the circumstances of this case, the Panel determines that it is appropriate that English is the language of the proceeding.
B. Identical or Confusingly Similar
The Complainants have established they have rights in the trade mark REVLON. The only difference between the disputed domain name and the REVLON trade mark lies in the word "buy" and the addition of the gTLD ".com". It is a well-established principle that TLDs such as ".com" are to be disregarded when considering whether a domain name in dispute is identical or confusingly similar to a complainant's trade mark.
The issue therefore to be addressed is whether the addition of the word "buy" in the disputed domain name serves to remove any confusing similarity with the REVLON trade mark. The Panel determines that it does not, since the word "buy" is a generic term and the word "Revlon" has been incorporated in and appears at the very front of the disputed domain name. In the context of the Respondent's website and in view of the Complainants' product line and business, the generic word "buy" adds to the confusion with the Complainants' REVLON trade mark.
The Panel therefore concludes that the first element of paragraph 4(a) of the Policy has been established.
C. Rights or Legitimate Interests
The Panel finds that the Complainants have established that REVLON is a long-established and famous trade mark. In the circumstances, it would require highly persuasive evidence for the Respondent to show it has rights or legitimate interests in the disputed domain name. For the reasons set out in the Complaint and summarized above, the Panel finds that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in relation to the disputed domain name.
The Respondent did not respond to the Complaint nor to the cease and desist letters sent to it. In the absence of any response or evidence tendered by the Respondent which would prove otherwise, the Panel can only conclude that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
The Panel therefore concludes that paragraph 4(a)(ii) of the Policy has been established.
D. Registered and Used in Bad Faith
The Panel is of the view that the disputed domain name was registered and is being used in bad faith. The trade mark in this case, REVLON, is reputable worldwide and it is quite evident from the Respondent's website that the Respondent is very familiar with the Complainants, their trade marks and their product line. The Respondent deliberately targeted the Complainants' trade mark and sought to "attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainants' mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location" (paragraph 4(b)(iv) of the Policy). Amongst other things, it has held itself out to be a Revlon online flagship store and has made unauthorized likely, copyright infringing use of several of the Complainants' advertisements. The Panel draws a negative inference from the Respondent's silence throughout the proceeding, its failure to respond to the Complainants' cease and desist letters, and its change of registrar immediately after the Complaint was filed by the Complainants in this proceeding.
In the circumstances, the Panel finds that the Complainants have established the third element of paragraph 4(a) of the Policy.
For 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 <revlonbuy.com> be transferred to the Complainants.
Date: January 22, 2016