The Complainant is Revlon Consumer Products Corporation of New York, United States of America, internally represented.
The Respondent is Private Whois Service of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2010. On July 22, 2010, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On July 22, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2010.
The Center appointed George R. F. Souter as the sole panelist in this matter on September 13, 2010. 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 Complainant has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932. 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.
In 2009, Revlon's net sales were well in excess of a billion United States dollars, with USD 747.9 million in the United States and USD 548 million in other countries around the world. The Complainant sells Revlon products in approximately 175 countries through wholly-owned subsidiaries in 14 countries and through a large number of distributors and licensees elsewhere around the world. In addition, Revlon also has several licensees around the world who manufacture and distribute Revlon-branded wigs and hairpieces and other products.
The Complainant has spent hundreds of millions of United States dollars over several decades advertising and promoting Revlon products internationally. In 2009, its advertising expenditure was in advance of USD 200 million globally, with the majority of this amount being spent on promoting the REVLON brand. The Complainant’s advertising expenditure has been broad-based, including celebrity advertising, sponsorship, and, since 1997, the Complainant has had a presence on the Internet, and currently operates over 200 web sites incorporating its trademark REVLON and variations thereof.
The Complainant has widely registered its trademark REVLON in many countries.
The disputed domain name was registered on April 5, 2004. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name merely adds the descriptive generic term “wigs” to its well-known REVLON trademark, and argues that not only is this insufficient to avoid likelihood of confusion between the REVLON trademark and the disputed domain name (the “.com” suffix being legally irrelevant) but rather adds to it; consequently the disputed domain name should be considered confusingly similar to the Complainant’s REVLON trademark.
The Complainant states that the Respondent has no relationship with the Complainant, and that the Complainant has not authorized the Respondent to use the REVLON trademark. Further, the Respondent has not attempted to demonstrate, and the Complainant has not been able to determine, (i) that before notice was given to the Respondent of this dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain name, even if they had not acquired any trademark or service mark rights; or (iii) that 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 its trademark. Consequently the Respondent should be found to have no rights or legitimate interests in respect of the disputed domain name.
The Complainant further alleges that it is virtually inconceivable that the Respondent chose to register the disputed domain name without being aware of the existence of the Complainant’s REVLON trademark, and argues, with reference to the decision in Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291, that the disputed domain name should be considered as having been registered and used in bad faith. Additionally, the Complainant has drawn the attention of the Panel to the use of the web site operated under the disputed domain name, which contains a revenue-earning “click-through” facility to both the Complainant’s products and those of its competitors, and has drawn the Panel’s attention to the decision in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623, to the effect that "[s]uch exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy." B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark (“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
The Panel has no hesitation in recognizing the well-known status of the Complainant’s REVLON trademark in the cosmetics and beauty care industry, and agrees that the mere addition of the descriptive generic word “wigs” (one of the Complainant’s products) is insufficient to avoid a finding that the disputed domain name is confusingly similar to the Complainant’s trademark, the suffix “.com” being legally irrelevant to the issue. Consequently, the Panel finds that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to UDRP precedents, it is sufficient that a complainant show a prima facie case that the respondent lacks rights or legitimate interests in the domain name, in order to shift the burden of proof on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the domain name, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel draws the appropriate conclusion. The Panel accepts the Complainant’s contentions under paragraph 4(a)(ii) of the Policy, and finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of a well-known mark, the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the domain name was registered in bad faith. Paragraph 4(a)(iii) of the Policy, however, also requires a finding that the domain name has also been used in bad faith.
In the present case, the use of the disputed domain name on a revenue earning click-through facility to competitor’s products is clearly, in the Panel’s opinion, evidence of use in bad faith, and the Panel agrees with the decision in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., supra in this regard. Consequently, the Panel finds that the Complainant has also satisfied the dual test of paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Dated: September 27, 2010
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