The Complainant is Revlon Consumer Products Corporation of New York, the United States of America, represented by Erica Swart, the United States of America.
The Respondent is Privacy-P of Shanghai, the People’s Republic of China / Milan Kovac of Bratislava, Slovakia. 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 (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 27, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2010, the Registrar 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 29, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On October 29, 2010, the Center also transmitted an email to the parties in both Slovak and English regarding the language of proceedings. On the same day, the Complainant filed an amendment to the Complaint and also confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 November 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2010.
The Center appointed Pablo Palazzi 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.
On the question of the language of proceedings, the Center invited the parties to comment as the language of proceedings is normally the same as the language of the registration agreement, in this case, Slovak. The Respondent did not comment on this question by the specified due date. The Complainant requested the Panel to decide that the language of the administrative proceedings in this case be English for several reasons advanced in its language submission of October 29, 2010. According to paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings be English. 4. Factual Background
The Complainant and its affiliated companies make up a well-known enterprise that sells many different types of goods around the world. Its total worldwide sales last year exceeded USD 1 billion. The Complainant is best known for its cosmetics and similar beauty and make up products. Beauty products under the ALMAY trademark have been manufactured for almost 80 years.
The Complainant has rights over the ALMAY trademark, for which it holds more than three hundred (300) registrations around the world. The Complainant’s trademarks are registered in several jurisdictions, including the United States of America and the People’s Republic of China. In addition, the Complainant owns more than 450 domain name registrations worldwide. Eighty (80) of these domain names incorporate the ALMAY trademark and its variations thereof.
The disputed domain name was created on January 28, 2005. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its registered ALMAY trademark. The addition of the term “make up” is merely descriptive.
The Respondent lacks rights or any legitimate interests in the disputed domain name. The Complainant has never transacted any business with the Respondent and has never authorized the Respondent to use any of its trademarks. The Respondent had at a minimum constructive knowledge of the Complainant’s rights. In addition, the Respondent has no rights with respect to the disputed domain name given the distinctiveness and international reputation of the ALMAY trademark. Finally, the Respondent is not and has not been commonly known by the disputed domain name.
The Respondent registered and has used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of such 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 finds that the Complainant has established its trademark rights in ALMAY as evidenced by the trademark registrations submitted with the Complaint in several jurisdictions.
The Panel is also prepared to find that the domain name is confusingly similar to the Complainant’s trademark ALMAY. The name ALMAY is clearly the dominant element of the disputed domain name.
As a general principle, the addition of generic or descriptive terms to a trademark does not distinguish the domain name from the trademark and is not sufficient to avoid confusing similarity between the two. See Revlon Consumer Products Corporation v. IONE Inc.,WIPO Case No. D2010-1000; and Revlon Consumer Products Corporation v. Whois Privacy Services Pty Ltd, /Privacy Ltd. Disclosed Agent for YOLAPT,WIPO Case No. D2010-1070.
The term “makeup” used in the disputed domain name is related to the Complainant’s line of products, so many Internet users would suppose that the disputed domain name combining the trademark and such term had been registered by the Complainant or is related to the promotion of the Complainant’s products.
The addition of the generic top-level domain suffix “.com” does not change this finding.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Complainant’s trademarks. The Complainant has prior rights in the trademarks, including trademarks registered in Respondent’s jurisdiction, which precede the Respondent’s registration of the disputed domain name by several years. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1; and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The above four circumstances are not exclusive and bad faith may be found by the Panel alternatively.
The Complainant’s trademarks are widely known, and have evidently been known to the Respondent when registering the disputed domain name. Said domain name is highly unlikely to have been registered if it were not for the Complainant’s trademarks.
As described above, the disputed domain name is used to provide links to websites selling products competing with the Complainant’s products. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark (See, Revlon Consumer Products Corporation v. Ye Li,WIPO Case No. D2010-1568, and Revlon Consumer Products Corporation v. Zeng Wei,WIPO Case No. D2010-1567).
The Respondent has also been the subject of another UDRP proceeding (See, Intesa Sanpaolo S.p.A. v. Milan Kovac,WIPO Case No. D2010-1159), where it was held that registering a domain name containing the trademark of a well-known bank was evidence of bad faith. In the present context this also evidences bad faith for the present case.
The Complainant sent a cease and desist letter and several emails to the Respondent between July 2010 and October 2010. No reply has been received. The Panel finds the Respondent’s conduct in failing to reply to the Complainant’s cease and desist letter to be a compounding factor in bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and ,WIPO Case No. D2009-0266).
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in 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 name be transferred to the Complainant.
Pablo Palazzi
Sole Panelist
Date: December 13, 2010
Full & Egal Universal Law Academy