WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Registration Private, Domains By Proxy, LLC / Vinay A
Case No. D2019-0561
1. The Parties
Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America (“United States”), represented by Dorsey & Whitney, LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Vinay A of Mangalaur, Karnataka, India.
2. The Domain Name and Registrar
The disputed domain name <revlonautoparts.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2019, the Registrar transmitted by email to the Center its verification 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 March 15, 2019 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 amended Complaint on March 21, 2019.
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, and the proceedings commenced on March 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2019.
The Center appointed David Perkins as the sole panelist in this matter on April 24, 2019. 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 is one of the world’s best-known names in cosmetics and beauty care products and is a leading mass-market global cosmetics brand. It has traded under the REVLON trade mark since 1932. In 2017 Complainant had net sales in excess of USD 2.5 billion across its portfolio of brands worldwide. It sells Revlon branded products in more than 150 countries through wholly owned subsidiaries and a large number of distributors and licensees. In addition to its cosmetics products, Complainant also sells Revlon branded electric hair appliances. For example, hair dryers, hair straighteners and curling tongs.
Complainant’s parent company, Revlon, Inc., is a publicly traded company listed on the New York Stock Exchange. Exhibited to the Complaint is a sample of articles focused on Complainant and its Revlon products taken from news, financial and business publications and websites.
Complainant states that it has spent hundreds of millions of dollars over several decades advertising and promoting Revlon products worldwide on media including print, point of sale materials, television, the Internet and social media. Exhibited to the Complaint is a sample of Revlon advertisements by celebrities featuring prominent actors, singers and models. They include Frank Sinatra, Oprah Winfrey, Audrey Hepburn, Lauren Hutton, Elle Macpherson, Halle Berry and Claudia Schiffer. Complainant states that it pioneered such use of celebrities in advertising.
The REVLON trade mark
The Complaint explains that the REVLON trade mark is a fanciful combination of the names of Complainant’s founders, Charles and Joseph Revson and Charles Lachman. It takes “re” and “on” from Revson and “l” from Lachman.
The Complaint states that Complainant owns approximately 70 United States trade marks and/or pending applications for trade marks incorporating the REVLON mark and more that 2,000 such marks and/or pending applications worldwide. Exhibited to the Complaint is a selection of such registrations. The United States REVLON registrations, variously, cover international classes 3; 8; 9; 11; 18; 20; 21; 25; and 26. They range from applications filed in 1950 to 2004, claiming first use in commerce from as early as March, 1932, including the United States registration number 647222 registered on June 18, 1957.
The REVLON domain names
Complainant states that it owns more than 300 domain name registrations that incorporate the REVLON trade mark and variations of that mark.
Complainant states that it has maintained a presence on the Internet since May, 1997 when its website at “www.revlon.com” was launched. Exhibited to the Complaint are the current home pages from that website and also from the Revlon Professional home page at “www.revlonprofessional.com”.
Also exhibited to the Complaint are screenshots from Complainant’s current social media pages at Facebook “www.facebook.com/revlon”, Instagram “www.instagram.com/revlon”, Twitter “www.twitter.com/revlon”, Pinterest “www.pinterest.com/revlon” and YouTube “www.youtube.com/user/revlon”.
UDRP proceedings involving the REVLON trade mark.
Further exhibited to the Complaint is a list of 60 such cases successfully brought by Complainant to protect the REVLON trade mark against cybersquatters.
In the absence of a Response, what is known of Respondent is derived from the Amended Complaint and its Annexes.
The disputed domain name was registered on October 1, 2018.
Exhibited to the Complaint is a print out of the website to which the disputed domain name resolves. It provides an address in Antioch, Illinois, a telephone number, an email address “[…]@revlonautoparts.com” and carries the caption:
“We guarantee that you will be able to find high quality used auto parts for your car or truck within 24 to 48 hours and even less.”
The Complaint exhibits a cease-and-desist letter, which was sent to the address available on the website on October 23, 2018 and proof that the letter was returned as undeliverable based on “Bad Address”. Complainant says that when calls were made to the telephone number given on the website, the sales representatives answering the calls said they had never heard of Revlon Auto Parts and that the company called was Star Auto Parts.
The Complaint also exhibits print outs from the websites resolving from three other domain names which Complainant says were registered by the Respondent at about the same time as the disputed domain name. They are <mullerautoparts.com>, <calpineautoparts.com> and <craigautoparts.com>. It is apparent that the layout and content of those websites is practically identical to the website to which the disputed domain name resolves. Complainant states that - like the business address given at the website to which the disputed domain name resolves - the business addresses on each of them appear to be invalid. Additionally, each contains the same caption as that reproduced above.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant asserts that, based on the submissions and facts summarised above, it has rights in the REVLON trade mark. Moreover, Complainant asserts that that trade mark is a well known mark worldwide in the cosmetics and beauty care sector.
The disputed domain name incorporates the REVLON mark in its entirety. The addition of the suffix “auto parts” does nothing, Complainant says, to avoid a finding of confusing similarity. In that respect, Complainant cites several of the 60 UDRP cases, where the disputed domain names also incorporated descriptive suffixes and were held to be confusingly similar. For example, Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2011-0315 (<revlonwalk>) and Revlon Consumer Products Corporation v. Domain Administrator / Moniker Privacy Services, WIPO Case No. D2010-2091 (<revlonwalkrun>).
Rights or Legitimate Interests
Complainant's case is that Respondent cannot demonstrate that any of the circumstances in paragraph 4(c) of the Policy apply. Specifically, Complainant has neither licensed nor otherwise authorised Respondent to use the REVLON trade mark.
Further, there is no evidence that Respondent is commonly known by the disputed domain name: paragraph 4(c)(ii) of the Policy.
Still further, given the distinctiveness and international notoriety of the REVLON trade mark, Complainant says that Respondent’s use of the disputed domain name cannot constitute a bona fide offering of goods or services: paragraph 4(c) (i) of the Policy.
Nor, Complainant says, for the same reasons can Respondent's use of the disputed domain name be a legitimate noncommercial or fair use. Rather, given the reputation of the REVLON mark, Respondent is, clearly, Complainant says, using the disputed domain name to capitalise on the goodwill of that mark to misleadingly divert consumers with intent for commercial gain: paragraph 4(c)(iii) of the Policy. Complainant cites a number of cases decided under the Policy where lack of rights or legitimate interests was found notwithstanding that – as in this case – the disputed domain name resolved to websites offering products quite different to those of Complainant. For example, Barclays Bank Plc v. herethereandeverywhere, inc., WIPO Case No. D2011-1851 where the disputed domain name was <barclayscarhire.com>; LEGO Juris A/S v. HindiraSubekti, WIPO Case No. D2013-0110 where the disputed domain names included <legolaptop.com>; and Dreamworks Animation, LLC v. Michael Ioannou, WIPO Case No. D2009-1353 where the disputed domain name was used in a field unrelated to complainant’s motion picture business.
Registered and Used in Bad Faith.
Complainant’s case is that the circumstance listed in paragraph 4(b)(iv) of the Policy applies in this case. First, without any rights or legitimate interests, registration of a third party’s famous trade mark is clear evidence of bad faith. As summarised above, Complainant’s case is that, given the notoriety of the REVLON trade mark, Respondent can have no such rights in the disputed domain name.
Second, on the basis of the facts summarised above, Complainant submits that, by using the disputed domain name, Respondent is, clearly, attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the REVLON mark as to the source, affiliation or endorsement of that website.
As noted, no Response has been filed.
6. Discussion and Findings
The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name in issue.
The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
A. Identical or Confusingly Similar
On the basis of the evidence summarised in paragraphs 4.A.4 and 5 above, Complainant clearly has rights in the REVLON trade mark. Moreover, that mark has been for many years and continues to be well-known internationally in the cosmetics and beauty care sectors.
The disputed domain name incorporates the REVLON mark in its entirety and, accordingly, is confusingly similar to that mark. Complainant's submissions in that respect (summarised in paragraph 5.A.2 above) are well made out. The Panel also refers in this respect to paragraphs 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Consequently, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel considers that Complainant’s submissions summarised in paragraphs 5.A.3 to 5.A.6 are well made out and that Respondent cannot demonstrate rights or legitimate interests in the disputed domain name as required by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that Complainant has demonstrated circumstances falling within paragraph 4 (b)(iv) of the Policy and, accordingly, the requirements of paragraph 4(a)(iii) of the Policy are met.
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 <revlonautoparts.com> be transferred to Complainant.
Date: May 8, 2019