Complainant is Revlon Consumer Products Corporation of New York, United States of America, represented internally.
Respondent is Ryan Rupke of Beaverton, Canada. 2. The Domain Names and Registrar
The disputed domain names , , are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2011. On September 13, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On September 13, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as 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 September 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 7, 2011.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on October 19, 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
Complainant has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932 and is one of the world’s best-known names in the cosmetics and beauty care products. Net sales for the REVLON branded products in 2010 were USD 1.3214 billion, including sales in the United States and many other countries around the world.
Complainant sells Revlon branded products in approximately 175 countries through wholly-owned subsidiaries in 14 countries and through a large number of distributors and licensees elsewhere around the world.
Complainant has commenced several UDRP proceedings to protect its REVLON trademark and in each case decided to date (more than 40), the Panel ordered the transfer of the domain name to Complainant.
Complainant's parent company, Revlon, Inc., is a publicly traded company and is frequently referenced in news, financial and business publications and websites.
Complainant has spent hundreds of millions of dollars advertising and promoting REVLON products. Only in 2010, Revlon spent USD 265.2 million in advertising its portfolio of products worldwide. Revlon branded products are advertised on television, in print, on the Internet, and on point-of-sale materials. Complainant's first print advertisement, outside of trade journals, appeared in 1935 in the magazine The New Yorker.
Moreover Complainant pioneered the use of celebrities in its advertising, featuring prominent actors, singers, and models. Complainant has also sponsored numerous television programs and fundraising events.
Complainant owns more than seven hundred (700) domain name registrations worldwide, with more than three hundred fifty (350) of these domain names incorporating the REVLON trademark and variations thereof.
Complainant, or one of its subsidiaries, affiliates, or related companies, owns over fifty (50) Untied States trademark registrations and/or pending applications for trademarks incorporating the REVLON trademark, and more than two thousand six hundred (2,600) trademark registrations and/or pending applications for trademarks incorporating the REVLON mark worldwide.
In particular, Complainant owns the Canadian trademark registration for REVLON, No. UCA09308, registered on June 10, 1937 and regularly renewed, for a variety of goods in various international classes such as cosmetics, skin creams, lipsticks and other beauty care products.
Respondent appears to have registered the disputed domain name on November 10, 2010 and the disputed domain names and on November 25, 2010. The website corresponding to the disputed domain name features images of several products bearing the REVLON trademark, as well as advertisements of Complainant. The disputed domain names and do not currently appear to be operational, since they point to parking web pages.
Complainant sent a cease and desist letter to Respondent by e-mail on March 25, 2011.
Respondent answered on April 2, 2011 agreeing to transfer the disputed domain names to Complainant and asking how to proceed. Notwithstanding the receipt of the instructions and further information from Complainant, Respondent has never completed the transfer of the disputed domain names and did not respond to the last e-mail sent from Complainant on May 13, 2011. 5. Parties’ Contentions A. Complainant
Complainant owns trademark rights in the REVLON trademark in the United States and throughout the world, including Canada where the Respondent is located, according to WhoIs information.
Complainant contends that the REVLON trademark is internationally famous and a fanciful combination of the names of its founders: Charles and Joseph Revson and Charles Lachman, who contributed the "L" in the Revlon name. Revlon has no generic or descriptive meaning, since it is a coined term.
Complainant claims rights in the REVLON trademark based on a large number of trademark registrations and a global portfolio of trademark registrations owned by itself, its subsidiaries, affiliates, or related companies and at common law rights through the reputation and goodwill established by the continuous use of the REVLON mark in respect of beauty products by the Complainant for almost 80 years.
Complainant contends that the trademark registrations relied upon are valid, subsisting, and highly distinctive and are exclusively and extensively used by Complainant, its corporate affiliates, and/or authorized licensees and serve as prima facie evidence of Complainant’s ownership and the validity of the trademarks. See 15 U.S.C. § 1115. Complainant further submits that these trademark registrations are conclusive evidence of Complainant's exclusive right to use the marks in connection with the stated goods and services. See 15 U.S.C. § 1115(b).
Complainants contend that Respondent was surely aware of the existence of Complainant’s REVLON trademark and business when it registered the disputed domain names.
Complainant contends that the disputed domain names are confusingly similar to Complainant's REVLON trademark.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent has no relationship with Complainant. Respondent has no permission from Complainant to use any REVLON trademark.
Complainant contends that Respondent had, at minimum, constructive knowledge of Complainant’s rights because the disputed domain names were registered well after many years of Complainant’s trademark registrations; Complainant established trademark rights in the REVLON trademark prior to the date when Respondent registered the disputed domain names.
Complainant contends that there are no evidence of Respondent’s use of the disputed domain names or demonstrable preparation to use them in connection with a bona fide offering of goods or services; or that Respondent has been commonly known by the disputed domain names or, finally, that Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
Complainant states that Respondent registered and is using the disputed domain names in bad faith in light of (a) the fame and distinctiveness of Complainant’s REVLON mark (b) Respondent’s use of images of Complainant’s products bearing the mark REVLON as well as advertisements of Complainant (c) the inclusion of metatags with Complainant’s mark and (d) the maintenance by Respondent of the website at the disputed domain names despite several notifications from Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements:
(1) that the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) that the disputed domain names registered by Respondent have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Having considered Complainant’s submissions and the evidences adduced with Complaint, this Panel finds that Complainant has established that it owns prior rights in the REVLON trademark and the disputed domain names are confusingly similar to Complainant's REVLON trademark.
Complainant owns numerous REVLON trademark registrations all over the world, in the United States and in Canada, where Respondent is located. In particular the Canadian trademark registration for REVLON, No. UCA09308, registered the first time on June, 10, 1937 and regularly renewed, precedes the date upon which Respondent registered the disputed domain names (i.e., November 10, 2010 and November 25, 2010).
The disputed domain names, , , are confusingly similar to Complainant’s REVLON trademark because they incorporate the entirety of Complainant’s REVLON trademark and merely add the generic word “coupon” and the gTLD extensions “.com”, “net” and “org”.
The addition of a purely descriptive/generic term to a well-known mark is not enough to prevent confusing similarity between the domain names and the incorporated trademark (see America Online Inc. v. Yetech Communication Inc.,WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987; for the addition of a geographical indicator see Rolls-Royce Plc v. Hallofpain, WIPO Case No. D2000-1709, PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865) but may actually increases the likelihood of confusion.
Indeed, the Panel finds that the addition of the generic term “coupon” that clearly relates to Complainant’s business activity (as referred by Complainant “[being] a promotional item that the Complainant commonly uses in connection with products sold under the Complainant’s mark Revlon”) is likely to enhance the confusion and to lead customers to believe that the disputed domain names are effectively linked to, affiliated with or connected to Complainant.
The Panel believes that persons viewing the disputed domain names without awareness of their content likely would think that the disputed domain names are in some way connected to Complainant: this is known as “initial interest confusion” which occurs when a member of the public sees the disputed domain names and thinks that it may lead to a website associated with Complainant (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul,WIPO Case No. D2004-0988).
With regards to the suffixes “.com”, “.net” and “.org” (which indicate that the domain names are registered in the “.com”, “.net” and “.org” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v.Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; rab Bank for Investment And Foreign Trade v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457) they do not affect the domain names for the purpose of determining whether they are identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
Therefore, the Panel finds that Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Respondent did not reply to Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by Complainant.
In particular, Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the disputed domain names (as an individual, business or other organization) even if Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that Respondent has any rights or legitimate interests in the disputed domain names.
Respondent has not been and is not commonly known by the REVLON mark or the disputed domain names, and it has not acquired any trademark or service mark rights in that name or mark. Moreover, Respondent was not licensed or otherwise permitted to use Complainant’s trademark.
Furthermore, the use of the disputed domain names cannot be considered a bona fide offering of goods or services. The website to which the disputed domain name resolves contains images of several products bearing Complainant’s mark as well as several of Complainant’s advertisements. Moreover that website contains several links to other websites associated with coupons or that offer opportunities to the consumers. By registering the disputed domain name Respondent clearly intended to profit from the use of the disputed domain name which is confusingly similar to Complainant’s trademark REVLON, diverting Internet users to websites where pay-per-click links exist and generate gain for Respondent. This type of website, in such circumstances as in this case, does not constitute a bona fide offering of goods or services under the Policy paragraph 4(c)(i) (see The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. FA1227171; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194).
Finally, no response was filed in the case and the Panel, in accordance with paragraph 14(b) of the Rules, draws the inference that: “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493, and Giorgio Armani v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element under paragraph 4(a) of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered and are being used in bad faith.
Complainant’s REVLON trademark and activity are very widely-known throughout the world and considering the widespread use and reputation of REVLON name and mark, the inherent distinctiveness of the mark, and Complainant’s prior trademark registrations (included a registration in Canada where the Respondent seems to reside), Respondent most likely was aware of it when it registered the disputed domain names.
The choice of the disputed domain names by Respondent, in the Panel’s view, could not result from a mere coincidence. And indeed, Respondent’s awareness of Complainant’s activity and rights is suggested by the fact that Respondent registered the disputed domain names just consisting of Complainant’s mark REVLON and the generic word “coupon”, that clearly relates to Complainant’s business activity.
In line with other prior UDRP decisions (Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd.,WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395), the Panel believes that, in the absence of any rights or legitimate interests and lacking any contrary evidence by Respondent, the registration of the disputed domain names confusingly similar to Complainant’s widely-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411 mentioned in the Complaint).
Concerning the use of the disputed domain names, Complainant has proven that the disputed domain name , resolves to a web page that contains images of several products bearing Complainant’s mark as well as several of Complainant’s advertisements and hosts pay-per-click advertisements and several links to other websites associated with coupons, including links to websites featuring Complainant’s Revlon branded products and coupons for Revlon branded products. This activity constitutes evidence of bad faith registration and use of the disputed domain name. See McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353 (“the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy[...]”).
Indeed, by exploiting the renown of the REVLON trademark, Respondent diverts Internet users looking for Complainant’s website and seeks to gain profit out of the disputed domain names by providing sponsored links to several other websites and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominiosCase,WIPO Case No. D2008-0325 and Credit Industriel et Commercial S.A v. Maison Tropicale SA,WIPO Case No. D2007-0955).
Moreover, the Panel shares Complainant’s view that Respondent’s awareness and exploitation of Complainant’s REVLON trademark and of its reputation and goodwill, is also proven by the metatags associated with Respondent’s website. Indeed, such use of Complainant’s trademarks demonstrates Respondent’s conscious effort to intentionally divert Internet traffic away from Complainant, in violation of paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel also notes that the websites resolved from the other two disputed domain names and are currently parking pages with sponsored links. Also with regard to this issue, according to several precedents originated from the decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Panel believes that, in certain circumstances, the inaction in respect of a domain name can constitute a domain name being registered and used in bad faith.
In the Panel’s opinion, in the circumstances of this Complaint, the passive holding of the two disputed domain names and by Respondent, amounts to Respondent acting in bad faith.
Indeed, considering;
(i) the strong reputation of Complainant’s trademark and its widespread and international use;
(ii) Respondent’s failure to provide evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names;
(iii) the default of Respondent’s reply to Complainant’s contentions; and that
(iv) the registration of the disputed domain names prevent their registration by the lawful trademark owner.
the Panel concludes that also Respondent’s passive holding of the two other disputed domain names and satisfies the requirement of paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and are being used in bad faith (see Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau,WIPO Case No. D2000-0172 and Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaV,WIPO Case No. D2005-0615).
Finally, the Panel finds that Respondent’s bad faith is also proven by the fact that Respondent has maintained the website resolving from the disputed domain names despite the Complainant’s objections. Indeed, even if Respondent had agreed to transfer the disputed domain names to Complainant on April 2, 2011, it never completed the transfer and did not reply any more to the subsequent emails received from Complainant, maintaining the registration and use of the disputed domain names.
Such silence, ongoing cybersquatting, and dilution are further evidence of Respondent’s bad faith (see Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242).
In light of the above circumstances, the Panel is satisfied that the third element under paragraph 4(a) of the Policy is met and that the disputed domain names , and were registered and are being used in bad faith. 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 Complainant.
Alessandra Ferreri
Sole Panelist
Dated: November 2, 2011
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