The Complainant is Revlon Consumer Products Corporation of New York, United States of America, represented internally.
The Respondent is Jean Michel Druart of Aix en Provence, France, represented per se. 2. The Domain Names and Registrar
The disputed domain names and are registered with Gandi SARL. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 12, 2011, the Center transmitted by email to Gandi SARL. a request for registrar verification in connection with the disputed domain names. On September 12, 2011, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 14, 2011, the Center informed the Complainant that the language of the registration agreement for the disputed domain names is French, and invited it to either (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English, or (ii) to submit the Complaint transmitted in English or (iii) to submit a request for English to be the language of the proceedings. On the same date, Complainant sent a request for English to be the language of the proceedings. On September 16, 2011, Respondent sent a request for French to be the language of proceedings.
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 September 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2011. The Response was filed in French with the Center on October 10, 2011.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 21, 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 is a Delaware corporation, whose principal place of business in New York. The Complainant has manufactured, marketed and sold beauty products under the REVLON trademark continuously since several decades. It is one of the leaders in the cosmetic market.
The Complainant owns numerous word trademarks which include the term “revlon”, such as:
U.S. Trademark n° 2 797 953 that was registered on December 23, 2003. Classes 21, 23, 26, 36 and 38 and in International Class 9;
U.S. Trademark n° 1 886 476 that was registered on March 28, 1995. Classes 21, 40 and 44 and in International Classes 9 and 11;
U.S. Trademark n° 1 625 545 that was registered on December 4, 1990. Class 51 and in International Class 3;
U.S. Trademark n° 1 660 540 that was registered on October 15, 1991. Classes 23 and 44 and in International Class 8;
U.S. Trademark n° 2 025 709 that was registered on December 24, 1996. Classes 1, 2, 3, 13, 22, 23, 29, 30, 33, 40, 41 and 50 and in International Class 18 and 21;
U.S. Trademark n° 3 035 671 that was registered on December 27, 2005. Classes 1,4, 6, 50, 51 and 52 and in International Class 3;
U.S. Trademark n° 2 770 851 that was registered on October 7, 2003. Classes 2, 13, 23, 29, 30, 33, 37, 39, 40 and 42 and in International Classes 21 and 26;
U.S. Trademark n° 3 035 673 that was registered on December 27, 2005. Classes 2, 13, 23, 29, 30, 33, 40 and 50 and in International Class 21;
U.S. Trademark n° 2 886 731 that was registered on September 21, 2004. Classes 2, 13, 22, 25, 32 and 50 and in International Class 20;
- U.S. Trademark n° 2 891 418 that was registered on October 5, 2004. Classes 13, 21, 23, 31 and 34 and in International Class 11;
U.S. Trademark n° 2 886 630 that was registered on September 21, 2004. Classes 1, 4, 6, 50, 51 and 52 and in International Class 3;
U.S. Trademark n° 2 662 778 that was registered on December 17, 2002. Classes 37, 39, 40, 42, 50 and in International Class 26;
U.S. Trademark n° 2 886 732 that was registered on September 21, 2004. Classes 21, 23, 26, 36 and 38 and in International Class 9;
U.S. Trademark n° 2 789 089 that was registered on December 2, 2003. Classes 22 and 39 and in International Class 25;
Community Trademark n° 003335833 that was registered on November 11, 2004 in International Classes 3, 5, 8, 9, 11, 14, 18, 20, 21, 25, 26;
French Trademark n° 98 714 711 that was registered on January 26, 1998 in International Classes 3, 5 and 8;
Respondent is a French individual, living in Aix en Provence, who registered the disputed domain names on April 10, 2006, and on April 11, 2006.
In an email of October 5, 2010, the Complainant sent to the Respondent a cease-and-desist letter requesting him to (i) transfer the disputed domain names in its favor, (ii) cease using the REVLON or REVLON PROFESSIONAL trademarks and (iii) provide information of any other domain names that would include the words “Revlon” or “Revlon Professional”.
The Respondent answered to the Complainant’s on October 12, 2010 in an email in which he argues that he is entitled to use the disputed domain names as a seller of Complainant’s products, and refuses to transfer them to the Complainant. 5. Parties’ Contentions A. Complainant
First, the Complainant contends that the trademark REVLON has no generic or descriptive meaning, as it is the combination of the names of its founders, and states that over 40 UDRP proceedings have been handled in its favor with regards to the REVLON trademarks. The Complainant then affirms that the disputed domain names are confusingly similar to the Complainant’s trademarks as they both incorporate the Complainant’s “Revlon” distinctive element in its entirety. The Complainant argues that adding the suffix “-nution” or “-online” does not enable the Respondent to avoid any confusion between the trademarks and the disputed domain names.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests on the REVLON trademark. The Respondent has not been authorized by Complainant to use the REVLON trademark. Furthermore, the Respondent has no rights in the disputed domain names.
Thirdly, the Complainant claims that the disputed domain names have been registered and are being used in bad faith. The Complainant’s trademark REVLON is very famous and highly distinctive. It is virtually impossible that the Respondent would have chosen to register the disputed domain names without having been aware of the existence of the Complainant’s business and of its REVLON trademark.
According to the Complainant, the Respondent is using the websites “www.” and “www.” in order to attract Internet users for commercial gain by creating a likelihood of confusion with its trademarks. B. Respondent
First, the Respondent considers that there is no confusion between the disputed domain names and the Complainant’s trademarks, as the identity of the owner of the website has been clearly disclosed.
Secondly, the Respondent affirms that he has been allowed to create and use the websites “www.” and “www.”. According to the Respondent, the websites would have been originally created for an e-commerce website linked to a hairdresser in Aix-en-Provence, who was selling REVLON PROFESSIONAL products. The Respondent furthermore affirms that he has been duly authorized by Colomer France, a licensee of Revlon Professional, to register and to use the disputed domain names. To support his arguments, Respondent claims that Colomer France would even have granted him some royalties upon the sales of products which, according to the Respondent, would demonstrate that he was entitled to register and to use the disputed domain names.
Thirdly, the Respondent concludes that he has registered and is using the disputed domain names in good faith, in order to promote the REVLON trademark and to develop the sale of these products in France. 6. Discussion and Findings A. Language of 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.”
While the Complaint has been submitted in English, the language of the Registration Agreement appears to be French.
In its email of September 14, 2011, the Complainant requested the proceedings to be held in English. The Respondent opposed to such request in an email of September 16, 2011.
Panels agree that the overall circumstances surrounding the case have to be taken into account to appraise a request for the proceedings to be held in a language other than the one of the Registration Agreement. As pointed out: “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 proceedings. 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).
In the present case, the Respondent’s answer of October 12, 2010 to the cease and desist letter that had been sent to him on October 10, 2010 by the Complainant leaves no doubt in the Panel’s opinion that the Respondent’s command of the English language is good, and that there is no reason for the Respondent to oppose to such request. Consequently, the Panel decides that the proceedings shall be held in English, but that it will fully and exhaustively take into account the Respondent’s Response, although written in French. B. Substantive elements of the Policy
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(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. i. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of several trademarks consisting of the distinctive element “Revlon”.
Panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see e.g. Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358 and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
Such happens to be the case here. The disputed domain names and do both incorporate the REVLON trademark in its entirety.
The suffix “line” only adds a generic word to the trademark, and does not therefore exclude any likelihood of confusion. The same goes for the suffix “ution”, that probably refers to the wordplay between “revolution” and “revlon”, and which does not exclude any likelihood of confusion either.
As pointed out by prior UDRP panels in cases involving the trademark REVLON, the addition of a generic or highly descriptive words to a registered trademark is not sufficient to exclude a likelihood of confusion (see, among others: Revlon Consumer Products Corp. v. Swaleheen Akhtar,WIPO Case No. D2011-1156, related to the domain name ; Revlon Consumer Products Corp. v. Saun Jang,WIPO Case No. D2011-0625, related to the domain name ; Revlon Consumer Products Corp. v. Haodomains LLC and Wang Fei,WIPO Case No. D2011-0077, related to the domain name ).
For these reasons, the Panel considers the Policy, paragraph 4(a)(i) to be satisfied. ii. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see e.g. paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).
In the present case, the Complainant is the owner of the REVLON trademark, whose fame can hardly be disputed. The Complainant has no business or other relationships with the Respondent.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interest in the disputed domain name.
On his side, the Respondent claims to be the licensee of Colomer France, a company that would itself be the licensee of the Revlon Group. The Respondent however limits himself to mere assertions, without providing any evidence such as an agreement to support them. Absent any such evidence, the Panel cannot take mere allegations as granted. In any event, the potential contractual relations between the Revlon Group and Colomer France would still not entitle the Respondent to register the disputed domain names, without having had an official authorization from the trademark holder.
Absent such evidence, and considering that the Respondent is neither commonly known by the disputed domain names, nor has made a legitimate noncommercial or fair use of the disputed domain names, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.
Consequently, in light of the above, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled. iii. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
“By using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Complainant is the owner of the well-known trademark REVLON, which is used in most jurisdictions. It is one of the leaders in the cosmetic market.
Considering the worldwide reputation of the trademark REVLON, it is unlikely that the Respondent would have ignored the trademark REVLON and therefore registered the disputed domain names and in good faith.
Moreover, both disputed domain names are the combination of the registered trademark and a generic word, which, in the Panel’s view, undoubtedly shows that the Respondent was aware of the existence of the trademark REVLON when he registered both disputed domain names, as proved by the display on Respondent’s websites of pictures originating from the Complainant’s advertisements. Absent any evidence of a written agreement between the parties that would have entitled the Respondent to such a display, the disputed domain names cannot be considered to have been registered and to be used in good faith.
The Panel believes that the disputed domain names have been registered and are being used to attract Internet traffic to Respondent’s website for commercial gain, by creating a likelihood of confusion and leading users to believe that the Respondent would be an official retailer of the Complainant.
Consequently, the Panel is of the opinion that the disputed domain names and have both been registered and are being used in bad faith under the Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Dated: November 4, 2011
Full & Egal Universal Law Academy