WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation and Revlon (Suisse) S.A. v. Xia Zhen Zhou, Zhou Xia Zhen

Case No. D2017-0883

1. The Parties

The Complainants are Revlon Consumer Products Corporation of New York, New York, United States of America ("United States") (the "First Complainant") and Revlon (Suisse) S.A. of Schlieren, Switzerland (the "Second Complainant"), both represented by Steven Rosenthal, United States.

The Respondent is Xia Zhen Zhou, Zhou Xia Zhen of Changsha, Hunan, China.

2. The Domain Name and Registrar

The disputed domain name <revlonforsale.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar").

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2017, the Registrar transmitted by email to the Center its verification response confirming that the language of the Registration Agreement is Chinese and that the Respondent is listed as the registrant and providing the contact details.

On May 8, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 9, 2017, the Complainants requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on May 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 8, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on June 15, 2017. 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 manufacture, market and sell beauty products under the REVLON trademark in many countries around the world, including China. "Revlon" is a coined word formed from letters in the company founders' surnames (Revson and Lachman). The First Complainant is the owner of multiple United States trademark registrations, including trademark registration number 3, 035, 671 for REVLON, registered from December 27, 2005 with a claim of first use in commerce on March 7, 1932, specifying goods in international class 3, including cosmetics and makeup. The Second Complainant is the owner of multiple Chinese trademark registrations, including trademark registrations numbers 7329939 and 7840408, both for REVLON, registered from August 7, 2010 and April 14, 2011, respectively, and both specifying goods in class 3 including hair shampoos. These trademark registrations remain current. The Complainants operate an official website at "www.revlon.com" where they provide information about their products.

The Respondent is an individual located in China. The disputed domain name was registered on November 18, 2016. It resolves to a website mostly in Chinese that offers for sale REVLON-branded products. The website prominently displays the REVLON trademark, another trademark owned by the Complainants, a large number of images of the Complainants' beauty products and, at the top of the page, at least two images of the Complainants' advertising. Prices are displayed in Chinese Yuan and the customer help line is a "4000" telephone number.

The disputed domain name was registered shortly after a panel in a previous proceeding under the Policy ordered the transfer of a nearly identical domain name to the Complainant. See Revlon Consumer Products Corporation and Revlon (Suisse) SA v Jiangsu Bangning Science and Technology Co. Ltd. and Wen Zhou of Zhou Wen, WIPO Case No. D2016-1392, decision of August 31, 2016, regarding <revlonsale.com>. The domain name at issue in that previous proceeding resolved to the same website as that to which the disputed domain name in the current proceeding resolves. The website in each case displayed the same customer help line telephone number.

5. Parties' Contentions

A. Complainants

The disputed domain name is confusingly similar to the Complainants' REVLON trademark. The disputed domain name wholly incorporates that trademark. The addition of a generic Top-Level Domain ("gTLD") suffix ".com" is non-distinctive. The addition of descriptive words is generally not a distinguishing feature; here, the addition of "for sale" actually increases the likelihood of confusion for a retail site that sells REVLON-branded products because Internet users would assume the Respondent is authorized by the Complainants to sell those products.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no relationship with the Complainants. The Complainants have not authorized the Respondent to use the REVLON trademark. The disputed domain name was registered well after the Complainants' trademarks. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. Given the highly distinctive and fanciful nature of the REVLON trademark, and the advertising and sale of REVLON-branded products on the Respondent's website, it is evident that the Respondent registered the disputed domain name with full knowledge of the Complainants' REVLON trademark. The Respondent's website prominently misuses the Complainants' REVLON and REVLON PROFESSIONAL trademarks and uses the Complainants' advertising images without authorization, which gives the false impression that the website is the Complainants' flagship store to redirect Internet traffic intended for the Complainant for the Respondent's own purposes.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Procedural Issues

Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainants request that the language of the proceeding be English. Their main arguments are that the disputed domain name incorporates the English words "for sale", that the website to which the disputed domain name resolves is partly in English, and that it would be costly, time-consuming and burdensome for the Complainant to translate the Complaint.

The Panel notes that all the Center's email communications with the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainants' request that English be the language of the proceeding but the Respondent did not in fact object or express any wish to respond to the Complaint.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint was filed in English. The Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

B. Multiple Complainants

The Complaint was filed by two complainants against a single respondent. The Second Complainant is a subsidiary of the First Complainant and both Complainants are subsidiaries of Revlon, Inc. Each of the Complainants owns trademark registrations for REVLON in different jurisdictions. The Panel finds that they have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as "the Complainant" except as otherwise indicated.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the REVLON trademark.

The disputed domain name incorporates the Complainant's REVLON trademark in its entirety. The Complainant's trademark is the dominant and only distinctive element of the disputed domain name.

The disputed domain name contains the additional element "forsale" which is merely a combination of two dictionary words and, as such, is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Revlon Consumer Products Corporation and Revlon (Suisse) SA v. Jiangsu Bangning Science and Technology Co. Ltd. and Wen Zhou of Zhou Wen, supra.

The disputed domain name also contains the gTLD suffix ".com" but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark and typically disregarded. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the 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.

As regards the first circumstance, the disputed domain name is being used with a website that offers for sale what are alleged to be the Complainant's beauty products. The evidence does not show that the website displays products from any other source. The Complainant informs the Panel that the Respondent has no connection with it. Whether or not the products are counterfeit or genuine, the Panel notes that the website does not accurately disclose the Respondent's lack of any relationship to the Complainant. Given that the disputed domain name is confusingly similar to the Complainant's trademark, the Panel considers that the Respondent's website is very likely to give Internet users the false impression that it is authorized by the Complainant. These facts show that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent's name is listed in the Registrar's WhoIs database as "Xia Zhen Zhou, Zhou Xia Zhen". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a website that offers goods for sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location."

The Respondent registered the disputed domain name in 2016, years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The only distinctive element of the disputed domain name is identical to the Complainant's REVLON trademark - the additional element "forsale" being merely a combination of two dictionary words. The trademark is a coined term with no dictionary meaning. The website to which the disputed domain name resolves displays the Complainant's trademark and offers for sale what are alleged to be the Complainant's beauty products. Further, the disputed domain name was registered shortly after a panel in a previous proceeding ordered the transfer of a very similar domain name which resolved to the same website, to the Complainant. All these circumstances indicate to the Panel that the Respondent knew of the Complainant's trademark and deliberately chose to register it as part of the disputed domain name in bad faith.

The Respondent uses the disputed domain name, which wholly incorporates the Complainant's trademark, with a website to offer for sale what are alleged to be the Complainant's beauty products. The Respondent's website repeatedly displays the Complainant's trademark and images of the Complainant's products. The Respondent has no connection with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. Given these facts, the Panel considers that the Respondent's use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products on that website.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. 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 name <revlonforsale.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: June 20, 2017