The Complainant is Revlon Consumer Products Corporation of New York, United States of America, internally represented.
The Respondent is Saun jang of Seoul, the Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with YesNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2011. On April 8, 2011, the Center transmitted by email to YesNIC a request for registrar verification in connection with the disputed domain name. On April 12, 2011, YesNIC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
On April 13, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceedings on April 14, 2011, and the Respondent did not respond to the Center’s Language of Proceedings notification. On April 19, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the administrative panel when appointed would have the authority to determine the language of the proceeding.
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 April 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2011.
The Center appointed YoungHill Liew as the sole panelist in this matter on May 31, 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 Panel considers the following facts and circumstances to be true, because they were contended and/or evidenced by the Complainant, without having been contested by Respondent.
- Since 1932, the Complainant has continuously manufactured, marketed and sold beauty products under the REVLON mark. The Complainant is a worldwide distributor of beauty products for consumption under the name REVLON.
- The Complainant owns the following trademark registrations in the United States:
- No. 2797953 REVLON, Int. class 9, registration date: December 23, 2003; covering optical apparatus, namely, eye glasses, spectacles, sun glasses and cases therefore;
- No. 1886476 REVLON, Int. class 9; registration date: March 28, 1995, covering electric hair curlers and electric curling irons;
- No. 1625545 REVLON, Int. class 3; registration date: December 4, 1990, covering hair care product - namely, shampoos, conditioners, treatments, moisturizers, coloring preparations, relaxers, permanents, hairsprays and hair styling preparations;
- No. 1660540 REVLON, Int. class 8; registration date: October 15, 1991, covering hand held implements – namely, tweezers, eyelash curlers, blackhead removers, manicure sticks, nail buffers, nail files, nail shapers, nail smoothers, nail clips, nail nippers, nail scissors, cuticle nippers, cuticle trimmers, toenail clips, toenail nippers, toenail scissors, utility scissors, safety scissors, baby scissors, hand-operated barber shears, thinning shears and hairstyling shears;
- No. 2025709 REVLON, Int. class 18; registration date: December 24, 1996, covering handbags, tote bags, purses and cosmetic bags sold empty; Int. class 21; registration date: December 24, 1996, covering plastic containers, namely, personal organizers for cosmetics;
- No. 3035671 REVLON, Int. class 3; registration date: December 27, 2005, covering cosmetics and makeup, non-medicated skin care preparations, hair care, preparations, nail care preparations, non-medicated toiletries and perfumery;
- No. 2770851 REVLON, Int. class 21; registration date: October 7, 2003, covering hair combs and hair brushes; Int. class 26; registration date: October 7, 2003, covering hair accessories, namely, barrettes, ribbons, bands and ties;
- No. 3035673 REVLON, Int. class 21; registration date: December 27, 2005, covering cosmetic brushes;
- No. 2886731 REVLON, Int. class 20; registration date: September 21, 2004, covering hand-held mirrors;
- No. 2891418 REVLON, Int. class 11; registration date: October 5, 2004, covering electric operated facial saunas; battery operated facial saunas, electric operated foot baths; battery operated foot baths, electric operated heating units for use in heating paraffin wax for spa treatments, battery operated heating units for use in heating paraffin wax for spa treatments;
- No. 2886630 REVLON, Int. class 3; registration date: September 21, 2004, covering artificial nails, namely glue on nails, self-stick nails, and nail tips, acrylic powder kit used to put on acrylic nails comprised of nails, glue, acrylic powder, acrylic liquid, manicure stick, manicure brush, manicure file, and manicure buffer all sold as a unit, acrylic sculpting kit for artificial nails comprised of nail strengthener and cuticle pushers all sold as a unit, glue for use in applying artificial nails, nail tips, and nail wraps;
- No. 2662778 REVLON, Int. class 26; registration date: December 17, 2002, covering wigs and hairpieces;
- No. 2886732 REVLON, Int. class 9; registration date: September 21, 2004, covering electric or battery operated appliances for the hair, namely; curling and straightening appliances, hot curling brushes, hot rollers, hair setters and attachment accessories;
- No. 2789089 REVLON, Int. class 25; registration date: December 2, 2003, covering clothing, namely, coats, sweaters, sweatshirts, blouses, shirts, t-shirts, pants, slacks, sleepwear, lingerie, undergarments, scarves, hats, caps, belts.
- The Complainant owns the following trademark registration in the Republic of Korea:
- No. 5150 REVLON, Int. class 3; registration date: January 31, 2000, covering perfumed water, perfumed oil, joss-sticks, incense powder, hair oil, pomades, toilet powder, cosmetic cream, eyebrow pencils, rouge, hair conditioner, hair treatments, hair mousse, hair gels, hair sprays and hair spritz, hair creams, permanent waving solutions, cold permanent waving solutions, compound perfumery and incense; Int. class 21; registration date: January 31, 2000, covering combs and brushes for the hair.
- On July 28, 2003, the disputed domain name was created.
- On February 18, 2011, the Complainant sent to the Respondent an email requiring it to transfer the disputed domain name to the Complainant, to cease using the REVLON trademark as part of this domain name and any domain name or trade name, and to cease all use of the REVLON trademark. On March 1, 2011, the Complainant sent the Respondent a follow-up email. The Respondent did not reply to any of these communications.
There is no record of any active use of the disputed domain name. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s trademark for the following reasons:
- The addition of “.com” to the disputed domain name is non-distinctive because it is a generic top-level domain (gTLD) designation for registration of a domain name and does not avoid likely confusion.
- The addition of descriptive, generic terms to a trademark is generally not a distinguishing feature, but actually increases the likelihood of confusion. Here, the addition of the generic term “shop” to the distinctive and famous REVLON trademark does not avoid likelihood of confusion, but rather adds to it since Internet users would be confused and likely assume this disputed domain name belongs to the Complainant.
The Respondent has no relationship with the Complainant and the Complainant has not authorized the Respondent to use the REVLON trademark. The Respondent had, at a minimum, constructive knowledge of the Complainant’s rights because the disputed domain name was registered well after many of the Complainant’s trademark registrations were issued. The Respondent has not attempted to demonstrate (i) that before notice was given to the Respondent of this dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods or service; or (ii) that the Respondent has been commonly known by the disputed domain name, even if they had not acquired any trademark rights; or (iii) that the Respondent is 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 at issue.
Inaction, such as passive holding, with respect to a domain name registration can constitute bad faith. The Complainant’s mark REVLON is a famous, coined term. Given the highly distinctive and fanciful nature of the REVLON mark and its use in connection with cosmetics and makeup, it is virtually inconceivable that the Respondent chose to register the disputed domain name without being aware of the existence of the Complainant’s REVLON trademark and business. Accordingly, the Respondent has no rights with respect to the disputed domain name, which was registered and is being used in bad faith. The Respondent has maintained the infringing website over the Complainant’s objections. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceedings
In accordance with Rules paragraph 11, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement.”
In this case, the language of the registration agreement for the disputed domain name is Korean. However, the Complainant has requested to proceed in English on the following grounds:
- The Respondents chose to register the disputed domain name, which is comprised of a coined English word, REVLON, and the English word “shop”. The disputed domain name does not incorporate any words in Korean;
- The disputed domain name is a generic top level domain, “com“ whose root server is located in the United States;
- The Panel notes additionally, the English language is a widely used “learning” or “second” language. English is the official language of more countries than any other and is widely studied in schools. English is a language of international communications in such varied fields as aviation, business, science and technology; it is commonly used on the Internet;
- Revlon, although conducting business around the globe, is headquartered in an English-speaking country, the United States, and the language of the company is English. The Complaint and all of the accompanying Annexes have been submitted in English;
- It would be cumbersome and to the Complainant’s disadvantage if the Complainant was required to translate the Complaint into Korean;
Given that the Respondent has not submitted an objection to the Complainant’s request that English be the language of the proceeding and has not filed a Response, the panel decides English shall be the language of the present administrative proceedings. 6.2 Transfer of the Domain Name in Dispute
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of 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
The Panel finds that the Complainant has established its trademark rights in REVLON as mentioned above in section 4.
The Panel is also prepared to find that the disputed domain name is confusingly similar to the Complainant’s trademark REVLON.
The name Revlon is clearly the dominant element of the disputed domain name.
The disputed domain name consists of the trademark of the Complainant to which the general term “shop” is added as a suffix. The ability of this general term, “shop”, to distinguish the disputed domain name from the trademark of the Complainant is limited. The phrase “shop” is a descriptive addition (Deutsche Telekom AG v. Timmy Comeau,WIPO Case No. D2003-0377).
Furthermore, “.com” should be ignored for the purpose of assessing similarity because it is merely domain signification of the site’s commercial nature (SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131).
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent has failed to file any Response in these proceedings. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. The Complainant has prior rights in the trademarks, including trademarks registered in the 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 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 Panel agrees that “where a complainant has asserted that the respondent has no rights or legitimate interest in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Do the Hustle, LLC v. Tropic Web, supra. Thus, in the absence of a Response or any communication from the Respondent the Panel believes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name, which the Respondent has not rebutted, and satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
There being no active use of the disputed domain name in a website or otherwise, the Panel believes that the Respondent’s inaction is a passive use in bad faith of the kind described in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, because bad faith registration and use can be inferred from a number of circumstances:
- Given that the REVLON trademark are well-known all around the world, including the United States and the Republic of Korea, the Respondent more likely than not was aware of the REVLON trademark, and of the Complainant’s business as a distributor of beauty products at the time of registering the disputed domain name.
- Since the Respondent registered the disputed domain name in 2003, there was sufficient time for the Respondent to develop a website under the disputed domain name as an evidence of a legitimate, or bona fide, or noncommercial purpose. However, there is no evidence of any such development.
- The Respondent received two cease and desist letters from the Complainant, and did not reply to them. Although generally considered the Respondent’s silence does not necessarily equal to bad faith, in the circumstances of the present case it certainly does not allow to infer the contrary.
- Although the Respondent was notified of the Complaint, it has not presented any response or made any other submission in these proceedings, and is in default.
Therefore, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) 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.
YoungHill Liew
Sole Panelist
Dated: June 13, 2011
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