WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Mike Iser and WhoisGuard
Case No. D2010-1370
1. The Parties
Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented internally.
Respondents are Mike Iser of Toronto, Ontario, Canada, and WhoisGuard of Westchester, California, United States of America and shall hereafter be referred to as “Respondent”.
2. The Domain Name and Registrar
The disputed domain name is <revlonnailpolish.com> which is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2010. On August 13, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On August 16, 2010, eNom, 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 Complainant on August 19, 2010 providing the registrant and contact information disclosed by eNom, Inc., and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on the same day.
The Center verified that the Complaint, as amended, 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 Respondents of the Complaint, and the proceedings commenced on August 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on September 13, 2010.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on September 24, 2010. This Panel finds that it was properly constituted. This 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 a corporation organized under the laws of Delaware, United States, subsidiary of Revlon, Inc., whose stock is publicly traded at the New York Stock Exchange.
Complainant, along with its affiliates, is engaged in the production and sale of cosmetics and beauty products around the world.
Complainant has rights in the REVLON trademark, for which it holds several registrations, including: registration No. 3,035,671 with the United States Patent and Trademark Office, registered in 2005, for international class 3, with claimed first use in 1932; registration No. 1,886,476 with the United States Patent and Trademark Office, registered in 1995, for international classes 9 and 11; registration No. 1,625,545 with the United States Patent and Trademark Office, registered in 1990, for international class 3. Further, Complainant’s affiliate, Revlon (Suisse) S.A., holds the REVLON trademark registration No. UCA9308 with the Canadian Intellectual Property Office, registered in 1937, with claimed first use in 1932.
The disputed domain name was created on November 25, 2009.
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932. The first product launched by Complainant was nail polish.
REVLON is one of the world’s best-known names in cosmetics and beauty care products and is a leading mass-market global cosmetics brand.
Complainant’s products are sold in approximately 175 countries, through wholly-owned subsidiaries in 14 countries and through a large number of distributors and licensees elsewhere around the world.
The REVLON trademark has developed enormous goodwill through more than 75 years of continuous use and hundreds of millions of dollars spent on advertising and promotions around the word. Complainant and its affiliates advertise REVLON products on television, in print, on the Internet, and on point-of-sale materials.
Complainant, or one of its subsidiaries, affiliates, or related companies, currently own more than 2,600 trademark registrations and/or pending applications for trademarks incorporating the REVLON mark worldwide.
Complainant has maintained a presence on the Internet since May 1997, when its own website at “www.revlon.com” was officially launched.
Complainant, by letters dated April 1, 2010, April 12, 2010 and April 22, 2010 sent by email to Respondent, requested that Respondent cease and desist from the further use of the disputed domain name. However, Respondent did not answer to these letters, so Complainant sent a follow-up letter via email to <[___]@whoisguard.com>, the e-mail listed as the administrative contact in the Registrar’s WhoIs information and <[___]@revlonnailpolish.com> on July 20, 2010. Complainant didn’t receive any response from Respondent.
The disputed domain name is confusingly similar to Complainant’s famous trademark REVLON.
REVLON is a coined term that was created by its founders over 75 years ago and has no descriptive or generic meaning.
Prior UDRP panels have recognized that the incorporation in a domain name of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainant’s mark.
The addition of descriptive, generic terms to a trademark is generally not a distinguishing feature, but actually increases the likelihood of confusion. Here the addition of the generic term “nail polish”, which is a product that Complainant produces and sells, to the distinctive and famous REVLON trademark, does not avoid likelihood of confusion, but rather adds to it.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has no relationship with Complainant and Complainant has not authorized Respondent to use the REVLON trademark. Respondent registered the disputed domain name without Complainant’s authorization.
Respondent had, at a minimum, constructive knowledge of Complainant’s rights because the disputed domain name was registered well after many of Complainant’s trademark registrations issued. Numerous UDRP panels have held that where the complainant has valid trademark rights in the trademark comprising the disputed domain name, and where such rights exist in the home country of the registrant, that the principles of constructive notice in that jurisdiction may fairly be applied, and Respondent may be presumed to have notice of the trademark. Given the distinctiveness and international reputation of the REVLON trademark, Respondent has no rights with respect to the disputed domain name.
Respondent has not attempted to demonstrate, and Complainant has not been able to determine that before notice was given to Respondent, Respondent used the disputed domain name in connection with a bona fide offering of goods and services; or that Respondent has been commonly known by the disputed domain name, even if they had not acquired any trademark or service mark rights; or that Respondent 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 trademark or service mark at issue.
The disputed domain name’s website features sponsored links to Complianant’s competitors. It is well settled that use of a domain name such as that being made by Respondent here, namely, a sponsored links page, does not constitute a bona fide offering of goods and services, nor is it a legitimate noncommercial or fair use, and there is no indication whatsoever that Respondent is commonly known by the disputed domain name.
Respondent registered and is using the disputed domain name in bath faith.
Given the highly distinctive and fanciful nature of the REVLON trademark, it is virtually inconceivable that Respondent chose to register the disputed domain name without being aware of the existence of Complainant’s REVLON trademark. Given the international reputation of the REVLON trademark, Respondent has no rights with respect to the disputed domain name.
Respondent is using the REVLON trademark in the disputed domain name to misappropriate the goodwill of Complainant and redirect Internet traffic intended for Complainant for its own purposes. Respondent’s website plainly incorporates several links to external websites selling cosmetic products, including those of Complainant’s competitors. Respondent’s use of “revlon” metatags on a website with sponsored links to websites of competitors of Complainant, on its own, is evidence of registration and use in bad faith.
Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
According to the WhoIs information, the registrant information for the disputed domain name was updated on August 14, 2010. Such date is after the dates of Complainant’s cease-and-desist letters sent to the registrant according to the privacy protected information and Complainant’s filing of the Complaint. Changing the name of the registrant after the registrant received the cease-and-desist letters from Complainant further evidences Respondent’s bad faith.
Furthermore, Respondent provided a false fax number, namely, +1.5555555555. Complainant believes that Respondent has falsified the administrative contact information. Providing false information as part of a domain name registration is a violation of the Policy and has also been held by previous Panels to be evidence of bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondents does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Determination of Proper Respondent
The Complaint filed with the Center on August 12, 2010, named WhoisGuard as respondent, although it clarified that it was “privacy protected”. A printout of the corresponding WhoIs, dated August 9, 2010, confirmed the above. At the Center’s request, the Registrar sent its registrar verification on August 16, 2010, disclosing the name of Mike Iser as registrant of the disputed domain name. In response to an email from the Center, on August 20, 2010, Complainant filed an amendment to the Complaint in which it added Mike Iser as additional Respondent, and attached a printout of the corresponding WhoIs, dated August 20, 2010, where it is shown “Updated Date: 14-aug-2010”. Complainant supplied no further information on the previously indicated Respondent WhoisGuard.
Pursuant to the paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Since the name of the real holder of the disputed domain name registration has been identified, in this case, this Panel decides to have Mike Iser as the proper respondent and thus further references to Respondent herein should be understood to Mike Iser2.
B. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the REVLON trademark.
The disputed domain name entirely incorporates the REVLON trademark, adding the term “nailpolish”, which is descriptive of a product that Complainant produces and sells. The addition of such descriptive term is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior panel decisions support this Panel’s view (Cfr. Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; GA MODEFINE SA v. AES OPTICS, WIPO Case No. D2000-0306).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s REVLON trademark.
C. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that Complainant’s REVLON trademark is well-known internationally, and that it is has been in commerce for more than 75 years.
Complainant asserts that it has no relationship with Respondent, and that it has never authorized Respondent to use the REVLON trademark. Likewise, Complainant asserts that Respondent has never been known by the REVLON trademark.
Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links and related categories links for products competing with those of Complainant. As established in prior cases, such use is not a bona fide offering of products or services3.
In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which incorporates Complainant’s internationally well-known REVLON trademark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name4.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Taking into consideration the nature of Complainant’s products, and the registration, prolonged use and international recognition of the REVLON trademark, it is clear that Respondent should have been fully aware of the existence of Complainant’s trademark and the products marketed thereunder at the time it obtained the registration of the disputed domain name5.
The fact that the actual registrant has changed just after or close to the date the Complaint was filed with the Center does not affect the above finding: this Panel is of the view that, under the Policy, registration of a domain name encompasses later acquisitions of the same6.
This Panel considers that the use of the disputed domain name for a website that is used to advertise or market products of Complainant’s competitors constitutes an improper use of Complainant’s mark and is evidence of Respondent’s bad faith7.
Further, Respondent’s failure to reply to Complainant’s cease-and-desist letters is also indicative of bad faith (see Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). Such finding is still valid even where a privacy protection service is provided by a third party, since such third party provider would be expected to forward such cease-and-desist letters to its principal (i.e. the underlying registrant)8.
In light of the above, this Panel concludes that the registration of the disputed domain name was, on the face of it, made in bad faith and it is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <revlonnailpolish.com> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: October 6, 2010
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several panel decisions. For instance, see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638.
3 See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870; and Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006.
4 See INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the Complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the Respondent to rebut the Complainant’s assertion”.
5 See Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629: “The Panel finds that Respondent in all likelihood had Complainant’s well-known mark ACCUTANE in mind when registering the Domain Name. ACCUTANE is a fanciful mark; that combination of letters has no known meaning other than as a reference to Complainant’s product”.
6 See Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406; MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270; Google, Inc. v Oreste del Mar, WIPO Case No. DMX2008-0013.
7 See Bartercard Ltd & Bartercard International Pty Ltd . v Ashton-Hall Computer Services, WIPO Case No. D2000-0177: “the Domain Name has been used to host a website offering competing products to those offered by the Complainant [...] this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor [...] It also indicates that the Respondent has used the Domain Name to attract Internet users to its website for commercial gain by virtue of confusion with the Complainant’s mark [...] Under the Policy, both of these are sufficient to show registration and use of the Domain Name in bad faith”. See also Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; and Medco Health Solutions, Inc. v. Digi Real Estate Foundation; WIPO Case No. D2005-0216.
8 See HSBC Finance Corporation, supra: “such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner. […] Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting”.