Complainant is Revlon Consumer Products Corporation of New York, United States of America, represented by an internal representative.
Respondent is TMS Inc. of Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. (the “Registrar”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2011. On February 11, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11 and 18, 2011, the Registrar transmitted its verification response indicating that Respondent TMS Inc. is 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 February 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2011. Respondent sent two email communications on February 11 and 17, 2011 but did not submit a formal response.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on April 6, 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 following facts are undisputed:
Complainant and certain of its affiliates around the world are owners of the ALMAY trademark for cosmetics and related beauty care products. Complainant’s ALMAY trademark is registered in many countries around the world and has been in use for almost 80 years. Complainant’s trademark registrations for the mark ALMAY for use in connection with cosmetics and related beauty care products include the following United States registrations:
- Registration No. 980,494, registered March 12, 1974
- Registration No. 2,675,119, registered January 14, 2003
- Registration No. 3,149,923, registered September 26, 2006
- Registration No. 3,143,514, registered September 12, 2006
Complainant currently owns eighty domain name registrations worldwide that incorporate the ALMAY trademark, including the domain name , at which Complainant’s website was launched in 2000.
Respondent is a resident of the United States and registered the disputed domain name in September 2010.
Respondent’s website at the disputed domain name features Complainant’s ALMAY trademark in text, as well as many sponsored links, including to competitors of Complainant.
On September 30, 2010, Complainant wrote to Respondent via email requesting that Respondent cease and desist from further use of the disputed domain name.
On October 1, 2010, Complainant received two responses from Respondent. In the first response, Respondent offered two options: (i) redirect the disputed domain name or (ii) sell it to the Complainant for ten (10) dollars. In the second response, the Respondent stated “[r]edirect is in place.”
On October 1, 2010 Complainant responded via email, continuing to request transfer of the disputed domain name, and sent a further follow up email on October 11, 2010 to Respondent as Complainant had not received any response.
Complainant had received no further response from Respondent as of the filing of the Complaint. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical to or confusingly similar to Complainant’s ALMAY trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith. B. Respondent
Respondent sent two brief email communications but did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has numerous registered trademarks for the mark ALMAY, including several U.S. registrations that pre-date Respondent’s registration of the disputed domain name. In addition, Complainant has established strong common law rights in that name by virtue of the undisputed use of the mark by Complainant and its predecessors in interest for almost 80 years.
The disputed domain name incorporates Complainant’s ALMAY trademark in its entirety. The addition of the generic term “coupons” does not add any distinguishing element. Indeed it arguably adds to the confusing similarity. See, e.g., Revlon Consumer Products Corporation v. Domains by Proxy, Inc./ Brian Dean, WIPO Case No. 2010-1742.
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s ALMAY trademark. B. Rights or Legitimate Interests
Respondent has no relationship to Complainant and has no permission from Complainant to use any ALMAY trademark. According to Internet research submitted by Complainant, Respondent is in the business of Internet marketing, as evidenced by its maintenance of several websites on this topic.
The disputed domain name points to a website that features Complainant’s ALMAY trademark as well as sponsored links, including links to competitors of Complainant.
Respondent, a U.S. resident, registered the disputed domain name well after many of Complainant’s U.S. trademark registrations issued. Pursuant to U.S. law, 15 U.S.C. Section 1072, registration of the ALMAY trademark constitutes constructive notice of the mark. Respondent therefore had at least constructive notice of Complainant’s ALMAY trademark.
There is no evidence in the record that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services or that Respondent has been commonly known by the domain name.
Respondent’s use of the disputed domain name in connection with a website featuring Complainant’s mark as well as sponsored links to Complainant’s competitors does not constitute a bona fide offering of goods or services.
The Panel finds that Respondent lacks any rights or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
In view of Complainant’s longstanding use of its ALMAY trademark in the United States for almost 80 years, as well as its numerous U.S. trademark registrations, it is highly unlikely that Respondent was not aware of Complainant’s mark when it registered the disputed domain name. In addition, the sponsored links to Complainant’s competitors found on Respondent’s website indicate that Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. This is evidence of Respondent’s bad faith registration and use.
The Panel finds that Respondent has registered and used 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 Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: April 20, 2011
Full & Egal Universal Law Academy