The Complainants are Revlon Consumer Products Corporation of New York, United States of America, represented internally (hereinafter referred to as the “First Complainant”), and Mazda Motor of America, Inc. d/b/a Mazda North American Operations of Irvine, United States of America, represented internally (hereinafter referred to as the “Second Complainant”).
The Respondent is Rampe Purda of Hailuoto, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading ( Shanghai) Co., Ltd dba HebeiD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2010. On October 22, 2010, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD a request for registrar verification in connection with the disputed domain name. On October 25, 2010, Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 26, 2010.
On October 26, 2010, the Center transmitted by email to the parties in both English and Finnish regarding the language of proceedings. The Complainant submitted a request that English be the language of proceedings on the same day. The Respondent did not comment on the language of proceedings by the specified due date. On October 29, 2010, the Complainant submitted a second amendment to the Complaint regarding the remedy.
The Center verified that the Complaint together with the amendments 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 November 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2010.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 29, 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.
As a preliminary matter, the Panel notes that the Complaint has been filed in English while the disputed domain name has been registered under a registration agreement in Finnish language. In general, the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise. However, in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Furthermore, previous Panels have accepted to conduct the proceeding in a language differing from the language of the registration agreement in cases, where a respondent has been notified of the Complaint and of the Center's procedural rules regarding the language of the proceeding in the language of the registration agreement and had the possibility to object to proceedings in a language differing from the language of the registration agreement but defaulted (See Nokia Corporation v. Huafeng Lu aka lu hua feng,WIPO Case No. D2010-1409; Revlon Consumer Products Corporation v. Jose Gilson de Almeida,WIPO Case No. D2010-1189; United Parcel Service of America Inc. v. Luanfei,WIPO Case No. D2010-0965; Lacoste Alligator S.A. v. Liu Dong Ping,WIPO Case No. D2009-1341; Cassa di Risparmio di Ascoli Piceno v. Ilhwa,WIPO Case No. D2009-0970; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by ,WIPO Case No. D2008-0186; Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi,WIPO Case No. D2007-1918; DHL Operations B.V. v. Zhang Kody shen,WIPO Case No. D2007-1234).
Having reviewed the submissions and circumstances of the present case, the Panel accepts English as language of this proceeding. The Center notified the Respondent of the Complaint and of the proceeding in English and Finnish. Even if the Respondent was not able to understand the English Complaint, he had the possibility to object to the Complainant's request that the proceeding should go forward in English as he received communications from the Center in Finnish as well. 4. Factual Background
The First Complainant has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932 and sells Revlon products in approximately 175 countries.
The First Complainant is the proprietor of numerous registered trademarks comprising the word REVLON in many countries, including the Finland, where the Respondent is located, inter alia Community trademark no. 003335833 REVLON, registered on September 4, 2003 (hereinafter referred to as the “REVLON Marks”).
The Second Complainant has manufactured, marketed and sold automobiles under the well-known MAZDA trademark continuously since 1931. The Second Complainant sells Mazda products in approximately 130 countries.
The Second Complainant is the proprietor of numerous registered trademarks comprising the word MAZDA in many countries, including the Finland, where the Respondent is located, inter alia Community trademark no. 000477976 MAZDA, registered on February 20, 1997 (hereinafter referred to as the “MAZDA Marks”).
The disputed domain name has been registered on January 20, 2010 and is used in connection with a domain parking website providing advertising links on the First Complainant’s products as well as links to direct competitors of the First Complainant, such as “Halston”, “Karl Lagerfeld” and “Aven”.
The First Complainant emailed a cease-and-desist letter to the Respondent on June 18, 2010. The Complainants have not received any response from the Respondent. 5. Parties’ Contentions A. Complainants
The Complainants assert that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainants argue that the disputed domain name is confusingly similar to the Complainants’ trademarks as it wholly incorporates the REVLON Marks and the MAZDA Marks. The Complainants further state that addition of the gTLD ".com" to the disputed domain name is non-distinctive because it is a generic top-level domain designation for registration of a domain name and does not avoid likely confusion. Furthermore, the Complainants state that likelihood of confusion can also be caused by the inclusion of two trademarks in a domain name.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent:
- has no relationship with the Complainants and the Complainants have not authorized the Respondent to use the REVLON or MAZDA trademarks;
- has no rights with respect to the disputed domain name, given the distinctiveness and international reputations of the REVLON and MAZDA trademarks;
- does not use the disputed domain name in connection with a bona fide offering of goods or services and that his use of the disputed domain name in connection with a domain parking page does not constitute a bona fide offering of goods or services under the Policy;
- has not been commonly known by the disputed domain name; and
- is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainants contend that:
- the Respondent had, at a minimum, constructive knowledge of the Complainants' rights because the disputed domain name was registered well after many of Complainants' trademark registrations issued;
- the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of its website;
- the Respondent’s failure to respond to the First Complainant’s cease-and-desist letter is evidence of bad faith; and
- the Respondent acted in a pattern of registering third parties’ trademarks as domain names and therefore acted in bad faith as he has already been ordered to transfer domain names to the respective complainant in seven earlier proceedings under the UDRP. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the Complainants’ REVLON and MAZDA Marks.
First, it is well established that the similarity between a trademark and a disputed domain name may also be found in cases when the domain name is comprised of two trademarks owned by different holders as Internet users will be mislead into believing that the domain name refers to one of the Complainants (See Audi AG v Hans Wolf,WIPO Case No. D2001-0148; Yahoo! Inc. v. CPIC NET and Syed Hussain,WIPO Case No. D2000-0195; Pharmacia & Upjohn AB v. M Inc.,WIPO Case No. D2000-0446; Société des Produits Nestlé SA v. Stuart Cook,WIPO Case No. D2002-0118; L’Air Liquide v. MIC,WIPO Case No. D2001-1246).
Second, It is also well established that the specific top level of a domain name such as “.com“, “.org“ or “.net“ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the First Complainant’s REVLON Marks and to the Second Complainant’s MAZDA Marks and that the Complainants have established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainants asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name as he has not been authorized to use the Complainants’ trademarks, as he does not use the disputed domain name in connection with a bona fide offering of goods or services, as he has not been commonly known by the disputed domain name, and as he is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainants provided evidence that both, the REVLON Marks and the MAZDA Marks, are globally recognized and well-established in connection with their respective products. It is inconceivable that Respondent registered the disputed domain name being unaware of even one of the Complainants’ rights in their respective trademarks.
Furthermore, by fully incorporating the First Complainant’s REVLON Marks and the Second Complainant’s MAZDA Marks in the disputed domain name and using the disputed domain name in connection with a parking website providing links to third parties’ websites, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainants’ websites to its own for commercial gain by creating a likelihood of confusion with the Complainants’ marks. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.
Finally, the Complainants have provided evidence that the Respondent has been ordered to transfer the domain names to the respective complainant in at least seven proceedings under the UDRP. Therefore, the Panel finds that the Respondent registered the disputed domain name in order to prevent the Complainants from reflecting their trademarks in a corresponding domain name, and that the Respondent engaged in a pattern of such conduct as required under paragraph 4(b)(ii) of the Policy.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 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 disputed domain name be transferred to the First Complainant. The Second Complainant submitted a statement of consent that the disputed domain name, which also includes the Second Respondent’s MAZDA Marks, shall be transferred to the First Complainant.
Torsten Bettinger
Sole Panelist
Date: December 13, 2010
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