WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation v. PhiphatPongk / Registration Private, Domains by Proxy, LLC, DomainsByProxy.com

Case No. D2012-1855

1.The Parties

The Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America (“USA”), represented internally.

The Respondent is PhiphatPongk, of Bangkok, Thailand / Registration Private, Domains by Proxy, LLC, DomainsByProxy.com, Scottsdale, Arizona, United States of America.

2. The Domain Names and Registrar

The disputed domain names <revlonlipstickcoral.info>, <revlonlipstickmatte.info> and <revlonlipstickpeach.info> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint concerning the disputed domain name <revlonlipstickpeach.info> was filed with the WIPO Arbitration and Mediation Center (the“Center”) on September 17, 2012. On September 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 20 and 21, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant forwarded an email informing the Center that It had recently also filed UDRP complaints for the domain names <revlonlipstickmatte.info> and <revlonlipstickpeach.info>, for each of which the Complainant had also recently received emails from Center revealing that PhiphatPongk was also the registrant of both of those domain names as well. Given the same creation date of the domain names and the same ownership, the Complainant requested permission to amend one of the complaints and consolidating the three actions into one Complaint.

On September 28, 2012 the Complainant filed an amendment to Complaint consolidating the Complaints concerning the other two UDRP cases in the present proceeding.

On October 5, 2012 the Center acknowledged receipt of the Complainant’s amendment to the Complaint, and its request for consolidation.

On the same date the Center notified the Registrar that the current case would now contain three disputed domain names, <revlonlipstickmatte.info>, <revlonlipstickcoral.info> and <revlonlipstickpeach.info>, which should remain under lock status. On October 9, 2012 the Registrar acknowledged receipt of the Center’s email and confirmed the lock would remain on the disputed domain names.

On October 10, 2012 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 October 10, 2012

On October 12, 2012 the Complainant filed a Request for Suspension of Proceedings. The Notification of Suspension was transmitted the same day.

On November 10, 2012 the Complainant requested a 30-day extension of the suspension period because the Respondent had not yet approved the transfers of the domain names. The Center transmitted the Notification of Extension to Suspension on November 12, 2012. On December 13, 2012 the Complainant requested a further extension of time to January 7, 2013 on the basis that the parties were continuing to try to resolve this matter.

The same day the Center acknowledged the Complainants request and informed the Complainant of the following that “as the proceedings have already been suspended for 60 days (2 months) absent exceptional circumstances, the Center will not be granting any further extensions to the suspension of this administrative proceeding.”

On January 8, 2013 the Complainant advised the Center that it had not been able to resolve this matter during the extension period, and requested reinstitution of the Proceeding. On January 9, 2013 the Center notified the Parties and Registrar, of the reinstitution of the Proceedings. The re-calculated date for the Response was January 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2013.

It was subsequently brought to the Center’s attention that there were apparent defects with the notification of the Complaint in this case, including a copy of the full Complaint not being sent to the Respondent by email. Accordingly, the Center proceeded to re-notify the Complaint on February 20, 2013 in this matter and the Respondent was granted a further period of 20 days to submit any response. No response was received from the Respondent by March 12, 2013. The Center issued the Notification of Respondent Default on March 18, 2013.

The Center appointed Warwick A. Rothnie as the sole Panelist in this matter on March 22, 2013.

The Panel finds that it is 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. In addition, it finds that the Respondent has been properly served.

4. Factual Background

The Complainant and its related companies produce and sell around the world cosmetics and other beauty products under the well-known trademark REVLON.

The term “Revlon” is a coined term created by the Complainant’s founders in 1932. The Complainant and its related companies have been selling Revlon products under that trademark continuously since that date. In 2011, the REVLON group had sales under the REVLON mark exceeding USD 1.3 billion through sales in approximately 175 countries. In 2011, the Revlon group spent approximately USD 271 million on advertising and promotion.

The REVLON group owns registered trademarks for REVLON around the world for a range of goods. These include 14 different registrations in the USA and Registered Trade Mark No. 49722 in Thailand for a wide range of goods in International Class 3.

The disputed domain names were registered on September 5, 2011. The Complainant does not suggest that any of the disputed domain names have resolved to a web site.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar). The registrar has confirmed that the language of the registration agreement for each of the disputed domain names is English. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of registered trademarks for REVLON including the registered trademark in Thailand referred to above.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

In undertaking that comparison, in the present circumstances it is permissible to disregard the “.info” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.

Apart from the addition of the gTLD, the disputed domain names differ from the proven trademarks by the addition of the word “lipstick” and a colour or other product descriptor. The addition of these elements does not in anyway detract from REVLON being the distinctive component of the disputed domain names. A notional user of the Internet who came across any of the disputed domain names would no doubt think it was related to a lipstick product of the particular kind – coral, matte or peach – produced by the Revlon group of companies.

Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain names:

(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 a 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Complainant notes that “Revlon” is a coined term with no descriptive meaning. The Complainant states that it has not authorized the Respondent to use the REVLON trademark in the Respondent’s domain names and that there is no other association or relationship between the parties. In addition, the Complainant points out that the Respondent’s name bears no similarity to either REVLON or any of the disputed domain names.

In these circumstances, therefore, the Complainant has raised a prima facie case that the Respondent has no rights or legitimate interests in any of the disputed domain names.

The Respondent has not sought to rebut that prima facie case and has not advanced any claim to a right or interest in any of the disputed domain names.

The Panel therefore finds in the absence of any evidence to the contrary that the Complainant has established this requirement under the Policy.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.

Paragraph 4(b) of the Policy sets out four examples of situations which satisfy this requirement. They are, however, only examples and bad faith can arise in any number of other ways.

Typically, a finding of bad faith under the Policy requires a showing that that a respondent registered and is using a disputed domain name to take advantage of its trademark significance. The Panel finds that is likely in this case. First, the term “revlon” is an invented word with no descriptive or other meaning. Secondly, the trademark REVLON has a very strong reputation and is widely known throughout the world. In these circumstances, one would ordinarily infer that a domain name containing REVLON was intended to take advantage of that term’s significance as a trademark. As already noted, the Complainant says there is no association of any kind between it and the Respondent. The Complainant has also not licensed the Respondent to use the Complainant’s REVLON trademark. The Respondent has not contested these statements. Nor has the Respondent provided any evidence of any kind of good faith use it is making of any of the disputed domain names. Under the totality of the circumstances, the Panel finds that each of the disputed domain names has been registered and is being used (passively held) in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (paragraphs 7.9 to 7.12) and Wal-Mart Stores, Inc. v. Su Rong Ye, WIPO Case No. D2000-0771.

6. Decision

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 names, <revlonlipstickcoral.info>, <revlonlipstickmatte.info> and <revlonlipstickpeach.info> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: April 2, 2013