The Complainant is Revlon Consumer Products Corporation of New York, United States of America, represented by Erica Swartz, United States of America.
The Respondents are Wang Fei of Zhengzhou, Henan, the People’s Republic of China and Haodomains LLC of Shanghai, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 18, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On January 18, 2011, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the specified due date.
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 January 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2011.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 18, 2011. 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
The Complainant, Revlon Consumer Products Corporation, is an American company whose business consists of manufacturing and marketing of beauty products and cosmetics which are sold worldwide.
In 2009, the Complainant's net sales were USD 1.2959 billion.
Since its establishment in 1932, the Complainant has been using the REVLON mark in connection with its goods.
The Complainant is the owner of multiple trademark registrations for the mark REVLON around the world. For example: Chinese trademark registration No. 143994 – REVLON, with the filing date of January 30, 2001; United States trademark registration No. 1625545 –REVLON with the filing date of January 16, 1990; United States trademark registration No. 1660540– REVLON, with the filing date of September 27, 1990; European Community trademark registration No. 003335833 –REVLON, with the filing date of September 4, 2003 and others.
Through extensive use around the world, the REVLON trademark has generated vast goodwill and has become famous in connection with beauty products and cosmetics.
The Complainant also developed a formidable presence on the Internet and is the owner of several domain names, which contain the name "Revlon". For example: , , , and .
The disputed domain name was registered on June 30, 2010.
The disputed domain name leads Internet users to a website that displays sponsored links to various websites, mainly websites selling beauty products and cosmetics. The disputed domain also includes an announcement stating that it is for sale.
The second Respondent has previously registered various domain name that incorporate the Complainant's trademarks such as and .
On September 30, 2010 the second Respondent contacted the Complainant via e-mail and informed it of the registration of the disputed domain name. The Respondent also offered to transfer the disputed domain name if the Complainant is willing to "cover the register fee".
The Complainant sent a cease and desist letter to the Respondents (hereinafter: "the Respondent") on September 30, 2010, informing the Respondent of the Complainant’s intellectual property rights in the mark REVLON and demanding that the Respondent discontinue its use in the disputed domain name, noting that the Respondent has previously registered domain names that incorporate the Complainant's trademark.
On October 6, 2010 the Respondent e-mailed the Complainant and offered to sell the disputed domain name for the price of USD 259. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the REVLON trademark, in which the Complainant has rights, seeing that it incorporates the REVLON trademark as a whole. The Complainant further argues that the addition of the gTLD ".com" is not of distinguishing effect.
The Complainant further argues that the addition of the word “China” which indicates a geographical location is insufficient to avoid confusing similarity between the REVLON trademark and the disputed domain name.
The Complainant further argues that the addition of the word “China” which indicates a geographical location is actually likely to increase the amount of consumer confusion, as the Complainant has an affiliate in China.
The Complainant further argues that the Respondent has no rights of legitimate interests in respect of the disputed domain name.
The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its REVLON trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the term “Revlon”.
The Complainant further argues that it sells its goods worldwide, including in China, where the Respondent is located, and is the owner of Chinese trademarks for "REVLON".
The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the REVLON trademark at the time he registered the disputed domain name.
The Complainant further argues that the Respondent's offer to sell the disputed domain name for the excessive price of USD 259 is clear evidence of its' bad faith.
The Complainant further argues that the Respondent deliberately embedded the Complainant's REVLON trademark in the source code underlying the disputed domain name which demonstrates the Respondent's awareness of the REVLON trademark and also evidences its bad faith.
The Complainant further argues that the Respondent's maintenance of the disputed domain name after receipt of the notice from the Complainant is also evidence of its' bad faith.
The Complainant further argues that the Respondent's pattern of registering domain names which incorporate its trademark is evidence of bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. ”(Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The disputed domain name resolves to a webpage which displays words in the English language;
c) The Respondent e-mailed the Complainant and offered to sell the disputed domain name while using the English language, which proves that the Respondent is able to understand and communicate in English;
c) The Respondent did not object to the Complainant’s request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark REVLON around the world. For example: Chinese trademark registration No. 143994 – REVLON, with the filing date of January 30, 2001; United States trademark registration No. 1625545 –REVLON with the filing date of January 16, 1990; United States trademark registration No. 1660540– REVLON, with the filing date of September 27, 1990; European Community trademark registration No. 003335833 –REVLON, with the filing date of September 4, 2003 and others.
The disputed domain name differs from the registered REVLON trademark by the additional word “China” and the additional gTLD “.com”.
The disputed domain name integrates the Complainant’s REVLON trademark in its entirety, as a dominant element.
The additional word “China” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s REVLON trademark, as it is a descriptive element that refers to a geographical location in which the Complainant operates as well.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
And, “he addition of the geographical indicator "China" is insufficient to avoid confusing similarity as it is a non-distinctive element that is somewhat connected with the Complainant is markets its products in among other countries, in China. The most prominent element in the domain name is clearly the term "grundfos", which lacks dictionary meaning in both English and Chinese, and may cause the public to view it as connected to the GRUNDFOS trademark. ”(Grundfos A/S v. WangShuLi,WIPO Case No. D2010-1575; See also Wal-Mart Stores, Inc . v. Su Rong Ye,WIPO Case No. 2002-0771)
Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its REVLON trademark or a variation of it. The Respondent did not submit a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the REVLON trademark since the year 1990. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark's vast goodwill. The Panel cites the following with approval: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Indeed, “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
The Respondent contacted the Complainant and offered to sell the disputed domain name for USD259. The disputed domain name currently resolves to a website that contains the announcement " is for sale". Furthermore, the Respondent has previously registered several domain names that incorporate the Complainant's trademark. The Respondent's pattern of conduct is clear evidence in the Panel’s view that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its widely known REVLON trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to sell it to the Complainant. By registering domain names that incorporate the Complainant's famous trademark the Respondent also prevented the Complainant from reflecting its marks in corresponding domain names. This behavior constitutes bad faith.
The Panel cites the following with approval:
“The Respondent in this case has offered to sell to Complainant, at a substantial price, domain names corresponding to marks in which Complainant has rights. Absent some exceptional justification from Respondent, it is reasonable to infer that it registered the names with the primary intention of selling them to Complainant (or to a competitor) for valuable consideration in excess of its out-of-pocket expenses directly related to the names. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy. Also, by registering several domain names that are confusingly similar to Complainant’s trademarks, Respondent has prevented Complainant from reflecting its marks in corresponding domain names. The registration of several names corresponding to Complainant’s trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy.” (General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov,WIPO Case No. D2000-0452).
Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the Respondent's offer to sell the disputed domain name to the Complainant, the Respondent's pattern of conduct and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: March 6, 2011
Full & Egal Universal Law Academy