Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented by Erica Swartz, United States of America.
Respondent is Shawn Parker of Reynoldsburg, Ohio, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2010. On October 21, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name On October 22, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 21, 2010.
The Center appointed Gary J. Nelson as the sole panelist in this matter on November 30, 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 A. Complainant
Complainant has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932. Net sales for the REVLON branded products in 2009 were USD 1.2959 Billion, with USD 747.9 Million in net sales in the United States and USD 548 Million in other countries around the world.
Complaint sells Revlon branded 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.
Complainant owns more than seven hundred domain name registrations worldwide, with more than three hundred fifty of these domain names incorporating the REVLON trademark and variations thereof.
Complainant, or one of its subsidiaries, affiliates, or related companies, owns over fifty Untied States trademark registrations and/or pending applications for trademarks incorporating the REVLON trademark, and more than two thousand six hundred trademark registrations and/or pending applications for trademarks incorporating the REVLON mark worldwide. B. Respondent
Respondent appears to have registered the domain name on May 29, 2010. The corresponding website does not currently appear to be operational, although Complainant has attached print outs of web pages showing a website offering a variety of "click through" opportunities to Complainant's competitors, as well as Revlon coupons. 5. Parties’ Contentions A. Complainant
Complainat owns trademark rights in the REVLON trademark and other trademarks incorporating the REVLON mark in the United States and throughout the world.
The REVLON trademark is a fanciful combination of the names of the Complainant's founders: Charles and Joseph Revson and Charles Lachman, who contributed the "L" in the Revlon name. Revlon has no generic or descriptive meaning.
Complainant's parent company, Revlon, Inc., is a publicly traded company and is frequently in news, financial and business publications and websites.
Complainant has spent hundreds of millions of dollars over several decades advertising and promoting Revlon branded products. In 2009, Complainant spent USD 230.5 million in advertising its portfolio of products worldwide, with the majority of this amount being spent on the REVLON trademark. Revlon branded products are advertised on television, in print, on the Internet, and on point-of-sale materials. Complainant's first print advertisement, outside of trade journals, appeared in 1935 in the magazine The New Yorker.
Complainant pioneered the use of celebrities in its advertising, featuring prominent actors, singers, and models. Complainant has also sponsored numerous television programs and fundraising events.
Complainant established trademark rights in the REVLON trademark prior to the date when Respondent registered the disputed domain name.
Respondent has no relationship with Complainant and has not received permission from Complainant to use any REVLON trademark and does not have rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in 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
Complainant has established that it owns prior rights in the REVLON trademark and the disputed domain name is confusingly similar to Complainant's REVLON trademark.
Complainant owns numerous REVLON trademark registrations in the United States. One of these registrations is for United States Trademark Office Registration No. 2,797,953. The registration date for this trademark (i.e., December 23, 2003) precedes the date upon which Respondent registered the disputed domain name (i.e., May 29, 2010).
Accordingly, Complainant has established rights in its REVLON trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, , is confusingly similar to Complainant’s REVLON trademark because the disputed domain name incorporates the entirety of Complainant’s REVLON trademark and merely adds a generic word along with the generic top-level “.org” domain name. Neither the addition of a purely descriptive/generic term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied). The addition of the word "coupons" is insufficient to overcome Complainant’s allegation of confusing similarity.
Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (December 4, 2000) (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the domain name, or that it is commonly known by any name consisting of, or incorporating the words “revlon,” “coupons” or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its REVLON trademark.
Complainant has provided evidence showing that Respondent was operating a website at “www.” which was merely an advertising portal and parking page that offered click-through opportunities, of which many were associated with coupons, and other click-through opportunities to websites operated by Complainant's competitors. This type of website, in such circumstances as in this case, does not constitute a bona fide offering of goods or services under the Policy paragraph 4(c)(i). See The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. FA1227171. Furthermore, it is likely Respondent received click-through fees each time an Internet user accessed the website at “www.” and clicked on any of the numerous options that were available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no rights or legitimate interests in the disputed domain name. See Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194.
Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
In regard to , Respondent maintained a corresponding website that hosted pay-per-click advertisements, including a click through opportunities to websites featuring Complainant’s Revlon branded products and coupons for Revlon branded products. This activity constitutes evidence of bad faith registration and use of the disputed domain name. See McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353 (“the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy[.]”).
The Panel also finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the REVLON trademark. Respondent’s awareness of Complainant’s REVLON trademark may be inferred because the famous mark was registered with the USPTO prior to Respondent’s registration of the disputed domain name and since the REVLON trademark is well-known and famous. See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant's trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 Complainant.
Gary J. Nelson
Sole Panelist
Dated: December 4, 2010
Full & Egal Universal Law Academy