WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications
Case No. D2003-0602
1. The Parties
The Complainant is Revlon Consumer Products Corporation, of New York, New York, United States of America.
The Respondent is Domain Manager, PageUp Communications, of New York, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names , and are registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2003. On August 1, 2003, the Center transmitted by email to R a request for registrar verification in connection with the domain names at issue. On August 4, 2003, R transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 August 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on August 28, 2003.
The Center appointed Angela Fox as the sole panelist in this matter on September 12, 2003. 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
Since 1932, the Complainant has manufactured and sold cosmetics under the trademark REVLON.
The REVLON name and house mark is an invented word derived from the surnames of the company founders, Charles and Joseph Revson and Charles Lachman. The mark was modelled on the Revson brothers� surname, with Lachman contributing the middle letter "L." The mark is protected as a registered trademark in the United States and abroad. Annexed to the Complaint were copies of the Complainant�s United States federal trade mark registrations 1152080, 1625545, 1660540, 1856240, 1886476, 1978991, 2022195, 2025709, 2091640, 2100320, 2638730, all for REVLON in stylised and unstylised forms for inter alia cosmetics and personal care products, spanning the period from 1981 to 2002.
The Complainant has sold REVLON cosmetics, fragrances and personal care products since 1932. Although the Complainant is based in New York, the beauty business is highly international and REVLON products are sold in at least 175 countries worldwide. Gross sales in 2002 exceeded U.S. $1.5 billion, and approximately U.S. $420 million of those sales were made outside the United States of America and Canada.
The REVLON brand is heavily promoted internationally through television and print advertisements, typically featuring high-profile celebrities such as actors, singers and models. Annexed to the Complaint were copies of print advertisements featuring the REVLON trademark in magazines including Vogue, Ladies Home Journal, McCall�s, Good Housekeeping, Seventeen, Mademoiselle, Glamour and Life, spanning a period from the early 1930s to the present. The Complainant�s brand is also promoted on its Internet web site. The Complainant owns 160 domain names incorporating the REVLON trademark and variations of it.
The Complainant became aware of the Respondent�s domain names in July 2002, and a few days later sent a cease and desist letter to the Respondent. The Complaint does not indicate whether a reply to that letter was ever received. The Complainant commenced these administrative proceedings just over a year later, on July 31, 2003.
5. Parties� Contentions
A. Complainant
The Complainant contends that the Respondent�s domain names are confusingly similar to its registered trademark, REVLON. All three domain names include the REVLON mark in its entirety. The Complainant argues that the non-distinctive domain name suffix and generic words "cosmetics," "online" and "store" will not avoid confusion.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the domain names. The Complainant has no relationship with the Respondent and has not authorised it to use the REVLON mark. The Respondent can reasonably be presumed to have known of the internationally famous REVLON brand when the domain names were registered. Before notice to it of the dispute, the Respondent was not using the domain names in connection with a bona fide offering of goods or services, was not commonly known by the domain names, and was not making any legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the REVLON mark.
Finally, the Complainant states that the domain names were registered and used in bad faith. The Complainant argues that the Respondent registered the domain names with the intent to prevent the Complainant from reflecting its trademark in corresponding domain names. The Complainant further contends that the registration of three domain names constitutes a pattern of such conduct, giving rise to bad faith registration and use under Paragraph 4 (b) (ii) of the Policy. The Complainant moreover asserts that the Respondent�s domain names have not been used and that the Respondent�s passive holding manifests use in bad faith on the principle set out in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003).
B. Respondent
The Respondent did not reply to the Complaint and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with Paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent�s default.
6. Discussion and Findings
Under Paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights in or legitimate interests to the domain name;
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous United States federal trademark registrations for the word mark REVLON and for marks incorporating REVLON in respect of cosmetics and related products and services.
The domain names are similar to the Complainant�s trademark, as they all incorporate REVLON as the first element. The suffix is incidental to domain names and cannot serve to distinguish. Given the similarity between the domain names and the Complainant�s trademark, the question is whether the elements "cosmetics," "online" and "store" will avoid confusion.
In the Panel�s view, they will not. The words "cosmetics," "online" and "store" are directly relevant to the Complainant�s business under its REVLON mark. The REVLON mark is used in respect of cosmetics. These are ordinary consumer goods which are commonly sold through a variety of trade channels including over the Internet ("online") and in shops ("stores"). The public is likely to assume that the Respondent�s domain names are those of the Complainant or are in some way connected to the Complainant�s business in REVLON cosmetics.
This line of reasoning is well-established. Numerous other panels have found that descriptive or generic additions, and particularly those which relate to the goods or services for which a mark is used, do not avoid confusing similarity of domain names and trademarks (see, among others, U-Haul International, Inc. v. Affordable Web Production, WIPO Case No. D2003-0511, on inter alia and ; America Online, Inc. v. Curtis Woods, WIPO Case No. D2001-0555, on inter alia and ; and Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254, on inter alia ).
The Panel finds that the domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the domain names.
The Complainant did not authorise the Respondent to register the domain names or otherwise to use the REVLON trademark. The Respondent�s name does not correspond to the domain names. Despite the passage of over a year since the Respondent registered the domain names, the Complainant�s research has found no use of them in connection with a bona fide offering of goods or services, or otherwise.
The Respondent did not respond to the case against it, and there is nothing in the facts to suggest that it has any rights or legitimate interests in the domain names. Indeed, it would be difficult for the Respondent to put these domain names, which are confusingly similar to the REVLON cosmetics trademark, to any legitimate use without infringing the Complainant�s registered rights.
The Complainant has done all that was reasonably possible to show that, on the balance of probabilities, the Respondent has no rights or legitimate interests in the domain names. The Panel infers from the Respondent�s silence that it has none. The Panel so finds.
C. Registered and Used in Bad Faith
In order to prevail, however, the Complainant still has to prove that the domain names have been registered and are being used in bad faith.
The Policy, Paragraph 4 (b) lists certain fact patterns which point to bad faith registration and use. The Complainant has drawn on one of these, Paragraph 4 (b) (ii), in support of its case. Under that provision, circumstances indicating that a domain name was registered in order to prevent the owner of a trademark from reflecting that mark in a corresponding domain name shall be evidence of both registration and use in bad faith, provided that the respondent has engaged in a pattern of such conduct. There are therefore two questions: (1) do the circumstances suggest that the Respondent registered the domain names with the intent to obstruct such action by the Complainant? and (2) has the Respondent engaged in a pattern of such conduct?
In answer to the first question, there are certainly indications that the Respondent�s act of registration involved an obstructive intent. The international fame of the Complainant�s trademark and the Respondent�s use of the directly relevant descriptor "cosmetics" point to a certainty of knowledge of the REVLON mark on the part of the Respondent. There is nothing to suggest that the Respondent has any rights or legitimate interests in the domain names, which remain unused more than a year after registration. Domain name registration confers an exclusive right to an Internet address, and the corollary of the Respondent�s acts of registration was naturally, therefore, to exclude the Complainant from reflecting its trademark in corresponding domain names. The Respondent can reasonably be inferred to have understood this, given that its own trading name, PageUp Communications, suggests activities in the communications sphere.
All these factors indicate that the Respondent knew of the Complainant�s trademark and registered the domain names with an intent to obtain exclusive rights, hence excluding the Complainant from them. That there is no evidence of precisely what the Respondent hoped to gain thereby is irrelevant. A mere intention to obstruct when the domain names are registered is sufficient to clear the first hurdle of Paragraph 4 (b) (ii). The Panel finds that, on the balance of probabilities, the Respondent registered the domain names with the intent to prevent the Complainant from reflecting its trademark in corresponding domain names.
The second question under Paragraph 4 (b) (ii) is whether the Respondent has engaged in a pattern of intentionally obstructive registration. What constitutes a "pattern," however, has proved a difficult question of its own. Given that commercial cybersquatters tend to target many different trademarks in order to maximise profits, the notion that a small number of domain name registrations incorporating a single trademark could constitute a pattern of behaviour under Paragraph 4 (b) (ii) seemed initially, and instinctively, wrong (see Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021, where the Panel was "not persuaded that the registration of three very similar or identical domain names arises to the �pattern of conduct� required by 4,b(ii).").
Although not all Panels were so sceptical (see General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452), most displayed caution when applying Paragraph 4 (b) (ii) to cases where a single respondent had registered only a handful of domain names incorporating a single trademark. Where a respondent had registered , and , for example, a three-member Panel found that the respondent had only "engaged in what might arguably [emphasis added] be deemed a �pattern,� inasmuch as he registered three domain names all containing the mark 3M and all accompanying that mark with a generic term for a product that 3M is known to make and sell" (Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727).
Cases where a single respondent has registered tens or scores of domain names incorporating one trademark have, however, shown that the mere targeting of a single trademark is no reason to eschew a finding of a pattern under Paragraph 4 (b) (ii) (see eg Time Warner Entertainment, L.P. v. HarperStephens, WIPO Case No. D2000-1254). Multiple domain names incorporating a single trademark are now more readily identified as patterns of intentionally obstructive registration, where the facts suggest the presence of that obstructive intent. In Ourisman Dodge, Inc. v. Ourisman �Okie doke� Dodge dot com and Ourificeman Dodge dot com (WIPO Case No. D2001-0108), for example, there was evidence that the Respondent bore ill will towards the Complainant. In that case, the Panel viewed "the Respondents� three (3) registrations of the Complainant�s service mark as an attempt to prevent the Complainant from using the same registrations based on Complainant�s service mark. The Panel believes the Respondent reasoned these multiple registrations would harm the Complainant and in this way the Respondents would feel vindicated. In the Panel�s view, three (3) such registrations do constitute a �pattern� per the Policy paragraph 4(b)(ii)."
When considering whether a pattern exists under Paragraph 4 (b) (ii), it is right to return to the question of intentionally obstructive registration. If the latter has been found, then all that is needed to support a finding of bad faith registration and use is a pattern of such behaviour, ie has the respondent repeated its intentionally obstructive act of registration? If so, then bad faith registration and use may be found under Paragraph 4 (b) (ii). If Paragraph 4 (b) (ii) is approached in this way, then the question of whether a pattern can consist of two or three domain names incorporating a single trademark becomes irrelevant. The question is only whether the facts indicate intentionally obstructive conduct and, if so, whether that conduct has been repeated, even a single time.
In this case, the Panel has found that the Respondent�s registrations were more likely than not intentionally obstructive. The Respondent repeated its act of intentional obstruction twice by registering a total of three domain names incorporating the Complainant�s trademark. That is enough to constitute a pattern of intentionally obstructive behaviour. The Panel finds that the domain names were registered and used in bad faith under Paragraph 4 (b) (ii) of the Policy.
The Complainant has also put forward a persuasive case that the Respondent�s passive holding of the domain names amounts to use in bad faith. The notion that inaction can constitute use at all seems flawed at first, since it runs counter to the ordinary meaning of "use" as the positive application of something to an advantageous purpose. Nevertheless, "use" can also mean the holding of something as a means of accomplishing or achieving some purpose (The Concise Oxford English Dictionary, 10th Ed., 2002, pg. 1579). When defined in this way, the concept of "use" easily accommodates the passive holding of domain names. Domain name registrations are exclusive rights, and their holders achieve the exclusion of all others from the registration of identical domain names, simply by virtue of their holding. Passive holding of domain names therefore comfortably falls within the dictionary definition of "use."
That bad faith inaction can amount to bad faith use also accords entirely with the examples of bad faith registration and use which appear in Paragraph 4 (b) (i), (ii) and (iii) of the Policy, which do not necessarily require any positive action on the part of the respondent following registration. This fact was noted by the Panel in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), where the test for passive, bad faith holding was defined as whether the Complainant had proved, taking into account the facts of the case and the Respondent�s behaviour, that "the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith." "Use" in such circumstances is necessarily more than positive acts; it is the totality of the circumstances surrounding the holding, through which the holder achieves and maintains exclusive rights.
In this case, all the surrounding circumstances point to registration and use in bad faith on the principle elucidated in Telstra. The Complainant�s trademark is very well-known in the country where the Respondent is based, and the presence of relevant descriptors in the domain names supports the presumption that the Respondent knew of the Complainant�s trademark when the domain names were registered. There is no evidence that the Respondent has any rights or legitimate interests in the domain names. Indeed, it is difficult to imagine any circumstances in which the Respondent could use the domain names without infringing the Complainant�s registered trademark. The Panel has found that the Respondent registered the domain names with an obstructive intent and that its acts constitute a pattern of intentionally obstructive behaviour. All these circumstances point to bad faith on the part of the Respondent at the time of registration, and continued bad faith throughout its passive holding.
For all these reasons, the Panel finds that the domain names were registered and 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, the Panel orders that the domain names , and be transferred to the Complainant.
Angela Fox
Sole Panelist
Dated: September 28, 2003
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