The Complainant is Revlon Consumer Products Corporation of New York, United States of America represented by Erica Swartz of United States of America.
The Respondents are Zeng Wei of People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Guangzhou Ming Yang Information Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 16, 2010, the Center transmitted by email to Guangzhou Ming Yang Information Technology Co., Ltd. a request for registrar verification in connection with the Domain Name. On September 28, 2010, Guangzhou Ming Yang Information Technology Co., Ltd. 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 October 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondents' default on October 25, 2010.
The Center appointed Douglas Clark as the sole panelist in this matter on November 2, 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.
The domain name registration agreement was in Chinese. The Complainant filed a request for English should be language of the proceedings on September 20, 2010. The Center has not been received any response from the Respondents. The Panel will deal with the issue of the language of proceedings in its substantive decision. 4. Factual Background
The Complainant is the owner of the REVLON trademark for cosmetics and related beauty care products and that it has manufactured, marketed and sold beauty products under the trademark REVLON continuously since 1932 in approximately 175 countries. The trademark REVLON is an invented word derived from the founders, Charles and Joseph Revson and Charles Lachman, who contributed the "l" in the Revlon name. REVLON has no generic or descriptive meaning.
The Complainant has a local subsidiary located in Japan, Revlon K.K., company.
The Complainant, or one of its subsidiaries, affiliates, or related companies, currently owns over fifty United States trademark registration and/or pending applications for trademarks incorporating the REVLON trademark, and more than two thousand six hundred trademark registration and/or pending applications for trademarks incorporating the REVLON mark worldwide. Fourteen United States, one Chinese and one Japanese certificate of trademark registration for the trademark REVLON have been offered in Annex 4 to the Complaint, which are USPTO registration certificates: 2797953; 1886476; 1625545; 1660540; 2025709; 3035671; 2770851; 3035673; 2886731; 2891418; 2886630; 2662778; 2886732; 2789089; Chinese registration certificate 143994; and Japanese registration certificate 771191.
The disputed Domain Name was registered on June 29, 2010. 5. Parties’ Contentions A. Complainant i). the Domain Name is confusingly similar to the Complainant's registered trademark
The Complainant contends that the Respondent’s Domain Name is confusingly similar to its registered trademark REVLON. The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to complainant's mark. The Complainant refers to Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios,WIPO Case No. DTV2001-0013 and Nokia Corporation v. N a.k.a IBCC, WIPO Case No. D2000-0102 to prove this argument.
The Complainant argues that the addition of geographically descriptive terms to a trademark does not avoid likelihood of confusion, and in this case, it adds to the confusion since the Complainant has an affiliate located in Japan. ii). the Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant alleges that the Respondent has no relationship with the Complainant, thus the Respondent has no permission from the Complainant to use any Revlon trademark. The Complainant argues that the Domain Name offers links to competitors of the Complainant, which further proves that the Respondent has no relationship with the Complainant.
By referring to previous WIPO cases, the Complainant believes that given the distinctiveness and international reputation of the REVLON trademark, the Respondent has no rights with respect to the Domain Name. The Complainant also believes that the Respondent has actual knowledge of the Complainant's rights in the REVLON trademark since the Domain Name was created one day after the Complainant sent its initial cease-and-desist letter to the Respondent concerning the domain name , which is a pending case in WIPO. The Complainant also points out that the Respondent’s use of the Domain Name in issue does not constitute bona fide use.
The Complainant further points out that the Respondent does not use the Domain Name as part of their legal name, corporate name, or any commonly-known identifier. iii). the Domain Name has been registered and is being used in bad faith
The Complainant argues that the term “revlon” is a famous, coined, highly distinctive and fanciful name. Given that the Respondent had actual knowledge of the Complainant's rights in the REVLON trademark prior to registering the Domain Name, notwithstanding this actual notice, the Respondent’s proceeding to register the Domain Name is clear evidence of bad faith.
Based on the communications between the Complainant and the Respondent, the Respondent offered to sell the Domain Name for USD1000, which further illustrates the bad faith of the Respondent.
Further to the links incorporated at leading to external websites selling cosmetic products offered by the Complainant's competitors shows the bad faith in accordance with paragraph 4 of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceedings
In accordance with Rules paragraph 11, "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement."
In this case, the registration agreement is in Chinese. However, the Complainant has requested to precede procedure in English on the following grounds:
i) the disputed Domain Name is comprised of a coined English word “revlon”, and the geographic indication of "Japan". The Domain Name does not incorporate the Chinese word for "Japan";
ii) the website which the Domain Name points to does not contain any words in the Chinese language;
iii) the root server of suffix “.com” is located in the United States, the Respondent has already chosen English and should not be granted a request for the proceedings to be in the Chinese language;
iv) the correspondence between the Complainant and the Respondent, including the initial cease-and-desist letter, and subsequent emails, is entirely in English;
v) English is widely used worldwide and is the first language of the Internet;
vi) Revlon is headquartered in the United States which is an English speaking country, and the language of the company is English. The Complaint and all of the accompanying Annexes have been submitted to the WIPO Arbitration and Mediation Center in English; and
vii) it would be cumbersome and to the Complainant's disadvantage if Complainant was required to translate the Complaint into Chinese. See LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052.
Given that i) Respondent’s website is all in English, which shows the intention of marketing to international customers; ii) the pre-dispute correspondence between the Complainant and the Respondent was in English; iii) the Respondent had not taken part in the proceedings, the Panel decides English shall be the language of the present administrative proceedings. 6.2 Substantive elements of the Policy A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the trademark REVLON in which the Complainant has rights.
By offering numerous registration certificates, the Complainant has proved its rights on the trademark REVLON in respect of cosmetics and related products in United States, the People’s Republic of China and Japan.
The Domain Name in issue incorporates REVLON as first element. The second word "Japan" can not serve to distinguish since it is a geographic term which would add to possible confusion, especially when Complainant has an affiliate located in Japan.
For above reasons the Complainant satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Based on the following reasons, the Panel decides that the Respondent does not have rights or legitimate interests in the Domain Name:
i) the Complainant did not authorize the Respondent to register the Domain Name or otherwise to use the Revlon trademark.
ii) the Respondent’s name does not suggest any connection with the trademark REVLON; neither did the Panel find any connection between Japan and the Respondent.
iii) the Respondent did not respond to the case, and there is nothing in the facts to suggest that it has any rights or legitimate interests in the Domain Name except for the mere fact that Respondent is the owner of the Domain Name.
For above reasons the Complainant satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds the Respondent registered and used the Domain Name in bad faith.
In accordance with paragraph 4 of the Policy, which lists the 4 circumstances that constitutes "bad faith": "circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name". Offering links directing to external websites which offer cosmetics and services of competitors of the Complainant is sufficient to satisfy the element of "bad faith".
For above reason the Complainant satisfied 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.
Douglas Clark
Sole Panelist
Dated: November 22, 2010
Full & Egal Universal Law Academy