ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Revlon Consumer Products LLC v. umer zia Case No. D2024-1279 1. The Parties The Complainant is Revlon Consumer Products LLC, United States of America, represented by Dorsey & Whitney, LLP, United States of America. The Respondent is umer zia, Pakistan. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2024. On March 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2024, 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 (Registration Private) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2024, 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 amended Complaint on April 2, 2024. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2024. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 6, 2024. 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.
page 2 4. Factual Background The Complainant has manufactured, marketed, and sold beauty products under the REVLON trademark continuously since 1932. REVLON is one of the world’s best-known names in cosmetics and beauty care products, and is a leading mass-market global cosmetics brand. In 2021, the Complainant had nearly USD 2.1 billion in net sales across its portfolio of brands worldwide. The Complainant sells REVLON products in more than 150 countries through wholly-owned subsidiaries and a large number of distributors and licensees. In addition, the Complainant’s licensed products include electric hair appliances, such as hair dryers, hair straighteners, and curling irons. The Complainant currently owns more than 300 domain name registrations that incorporate the REVLON trademark and variations thereof. The Complainant currently owns more than forty (40) United States trademark registrations and/or pending applications for trademarks incorporating the REVLON mark, and more than one thousand five hundred (1,500) trademark registrations and/or pending applications for trademarks incorporating the REVLON mark around the world, including registrations for the REVLON mark in Pakistan, the purported location associated with the disputed domain name. The disputed domain name , registered on December 26, 2023, resolves to a parked website which features sponsored links to beauty products. Clicking on the sponsored links takes website visitors to links for competitor products. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its registered trademark REVLON. The disputed domain name incorporates the Complainant’s trademark in its entirety and merely adds the geographical term “Pakistan”. According to established UDRP precedents, the addition of a geographical term does not prevent a finding of confusing similarity between a domain name and a trademark. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by the name “Revlon” in any capacity and has not been authorized, licensed, or permitted by the Complainant to use the REVLON trademark in any manner. The Complainant further submits that there is no evidence to suggest that the Respondent has been using, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Instead, the disputed domain name resolves to a website that features sponsored links to beauty products, which compete with the Complainant’s offerings. The Complainant alleges that the disputed domain name was registered and is being used in bad faith. Given the fame of the REVLON trademark and its longstanding use by the Complainant, it is argued that the Respondent was undoubtedly aware of the Complainant’s rights in the trademark at the time of registration of the disputed domain name. The Complainant points to the use of the disputed domain name to direct to a website with links to third-party sites as evidence of the Respondent’s intention to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website. The Complainant further asserts that the Respondent’s failure to respond to cease and desist letters, also supports the contention of bad faith registration and use.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy directs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”. The Uniform Domain Name Dispute Resolution Policy provides, at Paragraph 4(a), that each of three findings must be made in order for a Complainant to prevail: (i) The disputed domain name is 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 name; and (iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “Pakistan” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. There is also no evidence indicating that the Respondent has made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, the use of the disputed domain name appears to be primarily for the purpose of capitalizing on the fame of the Complainant's trademark. Indeed, the disputed domain name resolves to a website featuring links to third-party sites, some of which offer beauty products that directly compete with the Complainant’s products. Such use cannot be construed as a bona fide offering of goods or services. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, given the trademark's extensive international registrations, notably in Pakistan, and the distinctiveness of the REVLON trademark, the Panel concludes that the Respondent was likely aware of the Complainant’s trademark rights at the time of registration. Such awareness is indicative of bad faith registration as per established UDRP precedents. The disputed domain name resolves to a website featuring links to third-party sites, including competitors of the Complainant. This behavior demonstrates the Respondent's intention to attract, for commercial gain, internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website. This conduct falls squarely within the example of bad faith outlined in Paragraph 4(b)(iv) of the Policy. More, the Respondent’s failure to respond to the Complainant’s cease and desist letters further indicates bad faith. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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. /Nathalie Dreyfus/ Nathalie Dreyfus Sole Panelist Date: May 20, 2024
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