The Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented internally.
The Respondent is Rittuk Sutap of Bangkok, Thailand. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 6, 2012. On September 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 11, 2012, 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 for the disputed domain names.
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 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2012.
The Center appointed Zoltán Takács as the sole panelist in this matter on October 10, 2012. 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.
The Panel finds that the language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
The Complainant is one of the world’s best known names in cosmetics and beauty care products and is a leading mass-market global cosmetics brand. The Complainant has been manufacturing, marketing and selling beauty products around the world under the REVLON trademark continuously since 1932. The Complainant has several licensees that manufacture and distribute REVLON branded electric hair dryers, hair straighteners and curling irons in many countries of the world. Several of these REVLON branded hair dryers are available in 1875 watts and/or tourmaline variations.
The Complainant owns numerous registrations for the REVLON mark in United States (“U.S.”) and throughout the world, including in Thailand where the Respondent purportedly is located, e.g.:
- U.S. Trademark Registration No. 1,886,476, registered on March 28, 1995, for electric or battery operated appliances for the hair such as electric hair dryers and hair curlers;
- Thailand Trademark Registration No. TM49722, with priority of August 18, 1956, for a variety of beauty care products.
The Complainant has also owned the registration for the domain name since February 2, 1994, from which it operates its website.
The Respondent registered the disputed domain names in late 2011: on October 27, 2011, and on November 29, 2011.
At the time of submission of the Complaint, the website under the disputed domain name featured sponsored links to third parties’ goods in competition with those of the Complainant and had embedded the Complainant’s REVLON trademark in the source code underlying the website. The other two disputed domain names, and did not point to active websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names contain the word “revlon” and are therefore confusingly similar to its inherently distinctive REVLON trademark in which the Complainant has long established and reputed rights based on a number of trademark registrations valid throughout the world. The addition of generic terms “blow dryer”, “best”, “buy”, “1875”, “store”, “tourmaline”, “ionic” and “deals” as suffixes to the REVLON trademark do not avoid likelihood of confusion, but rather add to it since many of these terms refer to types of hair dryers sold by the Complainant’s licensees.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. It has no connection or affiliation with the Complainant, nor has it received any license or consent to use the REVLON trademark in the disputed domain names or in any other manner.
The Complainant also contends that the disputed domain names were registered and are being used in bad faith. “Revlon” is not a descriptive or generic word, on the contrary, it is a famous mark and the Respondent must have had at least constructive knowledge of the Complainant’s exclusive rights in and to the REVLON trademark. One of the disputed domain names, , pointed to a website featuring sponsored links to third parties’ goods in competition with those of the Complainant, while the other two disputed domain names, and do not point to active websites.. The Complainant contends that all this support its contention that the Respondent has registered and is using the disputed domain names to misappropriate the goodwill behind the Complainant’s REVLON trademark and redirect Internet traffic intended for the Complainant for its own purposes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence that it holds registered trademark rights for the mark REVLON, including Thailand where the Respondent is located. For the purpose of this proceeding, the Panel establishes that the Complainant’s valid U.S. Trademark Registration No. 1,886,476, registered since March 28, 1995, and Thai Trademark Registration No. TM49722, with priority of August 18, 1956, both for the word mark REVLON satisfy the requirement of having trademark rights for purposes of the Policy.
Having determined that the Complainant has trademark rights in REVLON, the Panel next assessed whether the disputed domain names , and are identical or confusingly similar to the trademark.
According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold for confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
All three disputed domain names begin with fully incorporating the Complainant’s REVLON trademark, with addition of the terms “blow dryer”, “best”, “buy”, “tourmaline”, “ionic”, “deals”, “1875” and “store” as suffixes.
The trademark REVLON is neither a common, nor a descriptive word; it identifies the business and products of the Complainant. Mere use of the descriptive terms “blow dryer”, “best”, “buy”, “deals” and “store” or the terms “tourmaline”, “ionic” and “1875”, all of which are either descriptive or directly refer to category of goods sold by the Complainant, the disputed domain names are otherwise identical with the Complainant’s REVLON trademark. The use of these words is not only incapable of eliminating confusing similarity with the Complainant’s trademark, but in fact increases it in the opinion of the Panel. The Panel finds that Internet users would likely to believe that the disputed domain names , and are connected to or associated with the Complainant and its business.
For all these reasons, the Panel finds that the element of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) before any notice to it of the dispute, its use of, or demonstrable preparations 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; or
(ii) it has been commonly known by the disputed domain names; or
(iii) it is making a 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.
In the present case, the Complainant submitted uncontested evidence that it holds well-established rights in the trademark REVLON.
The Complainant never gave permission to the Respondent to use its REVLON trademark in any way.
The Complainant’s prior rights in the trademark REVLON long preceded the date of registration of the disputed domain names.
It has been a consensus view among UDRP panels that, although the burden to prove the respondent’s lack rights or legitimate interests in respect of disputed domain names rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent.
In view of this Panel, there cannot be any plausible reason or explanation for the Respondent’s selection of the disputed domain names but to intentionally ride on the fame and reputation of the Complainant’s widely recognizable REVLON trademark. The Respondent could have provided evidence of the opposite, but it defaulted and failed to respond, and by doing so failed to offer to the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy, or otherwise to counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the panel to be present, shall be evidence of registration and use of the domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location of a product or service on your website or location.”
The Panel finds that here there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain.
The disputed domain names and point out to blank web pages. It has been a consensus view among UDRP panels that the apparent lack of so-called active use (e.g., to resolve to a website) of the disputed domain name does not as such prevent finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed and the registrant’s concealment of its identity. The Panel finds such to be the case in the present circumstances.
Prior to filing the Complaint the Complainant sent to the Respondent two cease and desist letters, but has not received response to either of them. The fact that Respondent has failed to provide any explanation for registering the disputed domain names, or to demonstrate any legitimate interest, including any evidence of actual of contemplated good faith use of the disputed domain names lead the Panel to believe that there is no such explanation.
The Panel finds it unlikely that the Respondent was unaware of the Complainant’s well-known REVLON trademark when registering the disputed domain names and that the choice of the disputed domain names, all beginning with and fully incorporating its REVLON trademark as well as terms describing products sold by the Complainant was merely coincidental.
It is obvious to the Panel that the Respondent’s embedding of the Complainant’s REVLON trademark over fifty times in the source code underlying the websites under the disputed domain names could not have been for any reason but to intentionally misappropriate the value and recognition of the REVLON mark. The Respondent certainly knew about the Complainant’s REVLON trademark and business and had deliberately registered, in this Panel’s opinion, the disputed domain names to ride of the fame of the REVLON trademark.
Additionally, the disputed domain name resolved – and at the time rendering this decision still does – to the Respondent’s website, allowing redirection to other websites advertising and selling products in competition with those of the Complainant. This misdirection of Internet traffic to the Respondent’s benefit, the Respondent’s use of the disputed domain name to promote sale of products in direct competition with the Complainant’s products is clear indicative of bad faith.
Under these circumstances the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith and the element of paragraph 4(a)(iii) of the Policy is satisfied. 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.
Zoltán Takács
Sole Panelist
Dated: October 19, 2012
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