The Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented by Steven Rosenthal, United States of America.
The Respondent is Whois Privacy Protection Service by MuuMuuDomain of Fukuoka-shi, Japan / yuji nakamura of Toshima-ku, Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2013. On May 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 30, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 30, 2013.
On May 30, 2013, the Center transmitted an email to the Parties in both Japanese and English language regarding the language of proceedings. On May 30, 2013, the Complainant requested that English be the language of proceeding. The Respondent did not submit any comments by the specified due date.
The Center verified that the Complaint together with the amendment to 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 in both Japanese and English, and the proceedings commenced on June 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2013.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on July 8, 2013. 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 has manufactured, marketed and sold beauty products under the REVLON trademark since 1932. In 2012, The Complainant’s net sales were USD 1,426.1 billion, including sales in the United States and many other countries around the world. The Complainant sells REVLON products in approximately 175 countries.
The Complainant, or one of its subsidiaries, affiliates, or related companies, currently owns over fifty (50) United States trademark registrations and/or applications for trademarks incorporating the REVLON mark and two thousand eight hundred (2,800) trademark registrations and/or pending applications for trademarks incorporating the REVLON mark worldwide. The Complainant’s registered trademarks, inter alia, are as follows: United States
Trademark: REVLON
Registration number: 3,035,671
Date of Registration: December 27, 2005
Class and goods: 3; cosmetics and makeup, non-medicated skin care preparations, and others.
Trademark: REVLON
Registration number: 2,797, 953
Date of Registration: December 23, 2003
Class and goods: 9; optical apparatus; namely eye glasses, spectacles, etc. Japan
Trademark: REVLON
Registration number: 4593723
Date of Registration: August 9, 2002
Classes and goods: 16; pastes and adhesives for office or domestic use, sealing wax, etc. 26; shuttles for making fishing nets, knitting needles for knitting machines, etc.
The disputed domain name was registered on December 13, 2012. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to the registered trademark REVLON in which the Complainant has rights;
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name should be considered as having been registered and used in bad faith by the Respondent; and
(iv) The Complainant requests the transfer of the disputed domain name to itself. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. The Language of Proceeding
The Registrar of the disputed domain name has informed the Center that the language of the relevant Registration Agreement was Japanese. On May 30, 2013, the Center issued in English and Japanese a Language of Proceeding Notification. On May 30, 2013, the Complainant submitted a request that English be the language of the proceeding on the grounds that it is presumable that the Respondent is able to communicate in English from the following facts: i) Respondent chose to register the disputed domain name, which is comprised of the REVLON trademark, a coined term in the English language, and the English (or Roman) letter “c.” The disputed domain name does not incorporate any words or characters in Japanese; ii) The website previously associated with the disputed domain name used a combination of English and Japanese to advertise Respondent’s “dating” or adult-escort services, further evidencing the Respondent’s familiarity with English. Moreover, the Registrar’s website includes some English; iii) By registering the disputed domain name with a generic top level domain name, , whose root server is located in the United States, the Respondent has, in effect, already chosen English and should not be accorded the opportunity for the proceedings to be in the Japanese language; iv) English is the primary language of international business and is the first language of the Internet. English is the official language of more countries than any other and is widely studied in schools. The Japanese public education system mandates that English be taught as part of the curriculum. According to the 2012 EF English Proficiency Index, Japan’s population has a moderate proficiency in English; v) The Complainant is a U.S. company and the primary language of the company is English. The Complaint and all of the accompanying Annexes have been submitted to the Center in English; vi) It would be cumbersome and to the Complainant’s disadvantage if Complainant was required to translate the Complaint and all of the exhibits into Japanese.
The Respondent did not submit any objection to the Complainant’s request that English be the language of the proceeding, notwithstanding the Center’s notifying the Respondent (in both English and Japanese) that the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of proceedings if the Respondent did not submit an objection.
It is the Panel’s view that the Respondent appears to have ability to communicate in English in light of the Complainant’s grounds for requesting that English be the language of the proceeding, to which the Respondent did not submit any objection.
In any event, the Respondent failed to submit a Response in either language and declined to participate in the proceeding. On the other hand, the Complainant is not able to communicate in Japanese, and therefore, if the Complainant were to submit all documents in Japanese, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001). B. Identical or Confusingly Similar
The Respondent has incorporated the Complainant’s mark REVLON in the disputed domain name. The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainant’s mark (See Revlon v. Ione Inc.,WIPO Case No. D2010-1000).
The Panel finds that the adding of the letter “c” by using hyphen “-“at the beginning of the disputed domain name does not lessen the confusing similarity between the disputed domain name and the Complainant’s Mark REVLON.
The generic Top-Level Domain (gTLD) suffix “.com” in the disputed domain name is non-distinctive (See Bellsouth Intellectual Property Corp. v. Melos aka Thomas Stergios,WIPO Case No. DTV2001-0013).
As such, the Panel has found that the disputed domain name is confusingly similar to the Complainant’s Mark, and the first element of the Policy has been established. C. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent in the disputed domain name. The burden of production will then shift to the respondent. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel has found that the Respondent has no connection or affiliation with the Complainant or its marks and has not received any license or consent, express or implied, to use the term “REVLON” in a domain name or in any other manner. The Panel further finds that on the record, it has been established that the Respondent has never been known by the disputed domain name.
Under the circumstance that the Respondent did not reply, the Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of the Policy has been established. (See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701). D. Registered and Used in Bad Faith
The Complainant has manufactured, marketed and sold beauty products under the REVLON trademark since 1932. In 2012, the Complainant’s net sales were USD 1,426.1 billion, including sales in the United States, Japan and many other countries around the world. The Complainant sells REVLON products in approximately 175 countries. The Complainant has spent hundreds of millions of dollars over several decades advertising and promoting REVLON products. In 2012 alone, the Complainant spent USD 269.4 million in advertising its portfolio of products worldwide, with the majority of this amount being spent on the REVLON brand. The Complainant has also sponsored numerous television programs and fundraising events. The Complainant, or one of its subsidiaries, affiliates, or related companies, currently owns over fifty (50) United States trademark registrations and/or applications for trademarks incorporating the REVLON mark and two thousand eight hundred (2,800) trademark registrations and/or pending applications for trademarks incorporating the REVLON mark worldwide.
In light of the fact above, the Panel finds that the Complainant’s mark REVLON is world widely well-known including Japan. Given the highly distinctive and fanciful nature of the Complainant’s mark, it is virtually inconceivable that the Respondent chose to register the disputed domain name without being aware of the existence of the Complainant’s mark (See Revlon Consumer Products Corp. v. Easy Weight Loss Info,WIPO Case No. D2010-0936; Microsoft Corp. v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071).
The Respondent has no rights or legitimate interests with respect to the disputed domain name as found under section C above. Accordingly, the Panel finds that the disputed domain name was registered in bad faith. See DaimlerChrysler Corporation v. Web4COMM SRL Romania,WIPO Case No. DR02006-0003 (“the registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use”).
The Respondent used the disputed domain name resolved to a website where adult-escort services were provided. In the circumstances above, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
As such, the Panel finds that the Respondent was using the disputed domain name in bad faith. See Compart AG v. C/Vertical Axis, Inc.,WIPO Case No. D2009-0462.
Therefore, the third element of the Policy has been established. 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 name be transferred to the Complainant.
Ho-Hyun Nahm
Sole Panelist
Date: July 22, 2013
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