Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented internally.
Respondent is Intranzition Services Inc of Bellmore, New York, United States of America.
The disputed domain name <revlonoutlet.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2010. On July 20, 2010, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 20, 2010, GoDaddy.com, Inc. transmitted by e-mail 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 July 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 12, 2010.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 16, 2010. 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.
Complainant states that it is one of the world’s best-known names in cosmetics and beauty care products and that it has manufactured, marketed and sold beauty products under the REVLON trademark continuously since 1932. Complainant states that it sells products under the REVLON trademark in 175 countries and that it had net sales of USD1.2959 billion in 2009.
Complainant states that its parent company, Revlon, Inc., is a publicly traded company on the New York Stock Exchange, trading under the symbol REV.
Complainant states that the trademark REVLON is a fanciful combination of the names the Complainant’s founders, Charles and Joseph Revson and Charles Lachman. Complainant further states that it has spent “billions of dollars over several decades advertising and promoting REVLON products. In 2009 alone, Revlon spent USD 230.5 million in advertising its portfolio of products worldwide, with the majority of this amount being spent on the REVLON brand. Complainant states that it, “or one of its subsidiaries, affiliates, or related companies,” owns more than 50 trademark registrations or applications in the United States that include the REVLON trademark, and more than 2,600 such registrations or applications worldwide. In support thereof, Complainant provided copies of 14 registration certificates for the trademark REVLON in the United States: U.S. Reg. Nos. 1,625,545; 1,660,540; 1,886,476; 2,025,709; 2,662,778; 2,770,851; 2,789,089; 2,797,953; 2,891,418; 2,886,630; 2,886,731; 2,886,732; 3,035,671; and 3,035,673. These trademarks are referred to hereafter as the “REVLON Trademark.”
The disputed domain name <revlonoutlet.com> (the “Disputed Domain Name”) was registered on October 23, 2008.
Complainant states that a website associated with the Disputed Domain Name “points to a website that features a link to 123plumbing.com. However, if an [I]nternet user clicks this link, it brings the user to an index page with no active content…. When an [I]nternet user goes directly to the website at “www.123plumbing.com”, there are images and reviews of books about plumbing.”
Complainant states that it contacted Respondent about the Disputed Domain Name via e-mail on April 28, 2010; May 6, 2010; and May 18, 2010. According to a copy of an e-mail provided by Complainant, Respondent stated on June 11, 2010 that the Disputed Domain Name “was intended to serve as Reverend Lon’s website to sell religious goods and artifacts, however, as the project was never completed due to the Revere[n]d’s untimely passing, the site is empty. The site will not sell goods to your company’s target market [and] is therefore not infringing on your company’s trademark”. On June 14, 2010, Complainant sent an e-mail to Respondent stating, in part: “We wish to offer our condolences for the passing of Reverend Lon. In order the help assess this matter further, we request that you please send us the name and address of his former church and any news article that discusses his passing.” Apparently, Respondent never provided any such information.
Complainant contends, in relevant part, as follows:
The Disputed Domain Name is confusingly similar to the REVLON Trademark because the Disputed Domain Name “wholly incorporates the REVLON [T]rademark” and the addition of the generic or descriptive word “outlet” “does not avoid likelihood of confusion, but rather adds to it.”
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant has not authorized Respondent to use the REVLON Trademark; maintaining a website that merely contains links to other websites is not a legitimate use, nor demonstrative of a bona fide offering of goods or services; Respondent may receive referral fees via the links on its website, indicating that the use is not noncommercial; and neither the WhoIs record nor Respondent’s website provide any indication that Respondent is commonly known by the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith because, among other things, the REVLON Trademark is famous and Respondent lacks any rights or legitimate interests in the Disputed Domain Name; the REVLON Trademark is so well-known that Respondent’s registration and use of the Disputed Domain Name suggests “opportunistic bad faith”; and by using the Disputed Domain Name in connection with a website that engages in commercial activity, Respondent “misappropriate[s] the goodwill of the Complainant and redirect[s] [I]nternet traffic intended for the Complainant for its own purposes.”
Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the REVLON Trademark, and Respondent does not dispute the validity of the REVLON Trademark. Further, previous panels under the Policy have found the same. See, e.g., Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468 (transfer of <revlon.net>); Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215 (transfer of <revlongirls.com>); Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291 (transfer of <iloverevlon.com> and <loverevlon.com>); and Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602 (transfer of <revloncosmetics.info>, <revlononline.info> and <revlonstore.info>).
As to whether the Disputed Domain Name is identical or confusingly similar to the REVLON Trademark, the relevant comparison to be made is with the second-level portion of each domain name only (i.e., “revlonoutlet”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
The Panel agrees with a previous decision under the Policy also relating to the REVLON Trademark, which stated:
The words “cosmetics,” “online” and “store” are directly relevant to Complainant’s business under its REVLON mark. The REVLON mark is used in respect of cosmetics. These are ordinary consumer goods which are commonly sold through a variety of trade channels including over the Internet (“online”) and in shops (“stores”). The public is likely to assume that Respondent’s Domain Name is those of Complainant or is in some way connected to Complainant’s business in REVLON cosmetics.
This line of reasoning is well-established. Numerous other panels have found that descriptive or generic additions, and particularly those which relate to the goods or services for which a mark is used, do not avoid confusing similarity of domain names and trademarks (see, among others, U-Haul International, Inc. v. Affordable Web Production, WIPO Case No. D2003-0511, on inter alia <uhaulmovingtruck.com> and <uhaultrailerrental.com>; America Online, Inc. v. Curtis Woods, WIPO Case No. D2001-0555, on inter alia <aolboxoffice.com> and <aolmovie.com>; and Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254, on inter alia <harrypotterfilms.net>); Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602 (transfer of <revloncosmetics.info>, <revlononline.info> and <revlonstore.info>).
The same reasoning applies the word “outlet” in this case. Accordingly, the Disputed Domain Name is confusingly similar to Complainant’s REVLON Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy.
Complainant alleges that, inter alia, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant has not authorized Respondent to use the REVLON Trademark; maintaining a website that merely contains links to other websites is not a legitimate use, nor demonstrative of a bona fide offering of goods or services; Respondent may receive referral fees via the links on its website, indicating that the use is not noncommercial; and neither the WhoIs record nor Respondent’s website provide any indication that Respondent is commonly known by the Disputed Domain Name.
Under the Policy, “a complainant is required to make out prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence [in Respondent’s e-mail to Complainant] of Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant alleges that bad faith exists pursuant to paragraph 4(b)(iv) given that the Disputed Domain Name is used in connection with a website that engages in commercial activity that is likely to cause confusion with Complainant. In addition, Complainant alleges that bad faith exists in light of the “highly distinctive and fanciful nature of the REVLON trademark.” The Panel agrees with a leading decision cited by Complainant on this point, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, which said that the disputed domain name was “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”
Furthermore, the Panel finds Respondent’s reference to “Reverend Lon” as a justification for its registration of the Disputed Domain Name to be unbelievable given Respondent’s failure to provide any details about the existence of such a person. See SmithKline Beecham (Cork) Limited; SmithKline Beecham Corporation (dba GlaxoSmithKline) v. Daniel Crean, WIPO Case No. D2006-1185 (finding that the registrant’s use of the domain name <tykerb.org> in connection with a website for a person allegedly named “Tyrone Kerby” “is irrelevant, does nothing to diminish his bad faith and is a transparent and unsuccessful attempt to evade the Policy” where Complainant owned rights to the trademark TYKERB for use in connection with an orally administered therapy for treatment of breast cancer and certain other tumors).
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <revlonoutlet.com> be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: August 30, 2010