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 Ye Genrong, Fang Fang and Wang Liqun of People’s Republic of China. (the “Respondents”) 2. The Domain Names and Registrars
The disputed domain names and are registered with Guangzhou Ming Yang Information Technology Co., Ltd and is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (collectively as the "Domain Names"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2010. On September 21, 2010, the Center transmitted by email to both Xiamen eName Network Technology Corporation Limited dba eName Corp and Guangzhou Ming Yang Information Technology Co., Ltd, a request for registrar verification in connection with the disputed Domain Names. On September 26, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp and September 28, 2010 Guangzhou Ming Yang Information Technology Co., Ltd transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 28, 2010.
The Center verified that the Complaint together with the amendment to 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 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 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 Names registration agreements are in Chinese. The Complainant filed request for English proceedings on September 28, 2010. The Center did not receive 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 and certain of its affiliates around the world are the owners of the trademark REVLON for cosmetics and related beauty care products. REVLON was created by its founders over 75 years ago and has no descriptive or generic meaning. It is a combination of the surnames of the Complainant's founders: Charles and Joseph Revson and Charles Lachman, who contributed the "l" in the Revlon name. Revlon products are sold in approximately 175 countries and hundreds of millions of USD spent on advertising and promotions around the world.
The Complainant, or one of its subsidiaries, affiliates, or related companies, currently owns over fifty USPTO 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 at Annex 4, 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.
In 2009, Revlon's net sales were USD1,295,900,000.00, and spent USD230.5 million in advertising its portfolio of products worldwide. Perfume is one of the products Complainant produces.
The disputed Domain Names and were registered on June 30, 2010, and was created on July 8, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that: i). the Domain Names are confusingly similar to the Complainant's registered trademark
The Complainant refers to prior panels' decisions that the incorporation of a trademark in its entirety is sufficient to establish that domain name is identical or confusingly similar to the Complainant's mark. The addition of geographically descriptive terms or generic terms does not avoid likelihood of confusion. ii). the Respondents have no rights or legitimate interests in respect of the Domain Names
The Complainant argues that the Respondents have no relationship with the Complainant and the Complainant has not authorized the Respondents to use the REVLON trademark. The Respondents have constructive knowledge of the Complainant's rights because the Domain Name was registered after many of the Complainant's trademark registration issued. The Complainant also cites the cease-and-desist letter concerning domain name , which was sent to the Respondents just several days after the registration of the Domain Names in issue so as to prove that the Respondents are fully aware of the existence of the trademark REVLON and Complainant.
The Complainant also argues that the use of the Domain Names in issue does not constitute bona fide use. Furthermore, the Respondents are not commonly known by the Domain Names, and the Respondents do not use the Domain Names as part of their legal name, corporate name, or any commonly-known identifier. iii). the Domain Names have been registered and are being used in bad faith
The Complainant argues that the term REVLON is a famous, coined, highly distinctive and fanciful name. Given that the Respondents had actual knowledge of Complainant's rights in the REVLON trademark prior to registering the Domain Names, notwithstanding this actual notice, the Respondents' proceeding to register the Domain Names is clear evidence of bad faith.
Based on the correspondence between the Complainant and the Respondents, the Respondents offered to sell the Domain Names for USD1500 each, which further illustrates the bad faith of the Respondents.
The Complainant emphasizes that the Respondents have registered the Domain Names in order to prevent Complainant from reflecting the mark in corresponding Domain Names, which is considered evidence of bad faith under paragraph 4(b)(ii) of the Policy. In accordance with paragraph 4(b)(iv) of the Policy, if the circumstances indicate that by using the Domain Names the Respondents have intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' website, then this is evidence of bad faith registration and use on behalf of the Respondents. Moreover, the Respondents deliberately embedded the Complainant's trademark REVLON in the source code. B. Respondent
The Respondents 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 Respondents' Registration Agreement is in Chinese. However, the Complainant has requested to precede procedure in English on the following grounds:
i) the Respondents chose to register the Domain Names, which are comprised of a coined English word ”revlon”, and either a geographic term, namely, "europe" or "usa", or the English word "perfumes". The Domain Names do not incorporate any words of "europe", "usa" or "perfumes" in Chinese;
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 Respondents have 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 Respondents, 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) the Respondents' websites are all in English, which shows the intention of marketing to international customers; ii) the pre-dispute correspondence between the Complainant and the Respondents was in English; iii) the Respondents have 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.
The Complainant has proved its rights by producing numerous trademark registrations for the term REVLON incorporating 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. Second word, in this case is "europe", "-usa" or "perfumes", which can not serve to distinguish since it is either a geographic term or a generic term which would add to possible confusion, especially when the Complainant have subsidiary or businesses in these areas or produces such goods. It "elicits a direct reference to ... activities and trademark both under a strict likelihood of confusion, but also under a likelihood of association..." (See Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman (WIPO Case No. D2000-1375)
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 Respondents do not enjoy rights or legitimate interests in the Domain Name:
i) the Complainant did not authorize the Respondents to register the Domain Names or otherwise to use the Revlon trademark. The websites associated with the Respondents' Domain Names do not promote any goods or services in relation to the Complainant's mark; instead, visitors are present with a collection of links to other websites, some of which offer services that compete with the Complainant.
ii) the Respondents' names do not suggest any connection with the trademark REVLON. The Respondents did not respond to the case, and there is nothing in the facts to suggest that they have any rights or legitimate interests in the Domain Names except for the mere fact that Respondents are the owner of the Domain Names. Mere registration does not seem sufficient to establish rights or legitimate interests since: "if this was so, all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration", according to General Electric Company v. John Bakhit,WIPO Case No. D2000-0386.
For the foregoing reasons, the Panel has not found any evidence to suggest the Respondents have a right or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
i) In accordance with Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(a) 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; or
(b) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(c) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 website or location or of a product.
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". 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.
Douglas Clark
Sole Panelist
Dated: November 22, 2010
Full & Egal Universal Law Academy