Complainant is Revlon Consumer Products Corporation of New York, New York of United States of America, internally represented.
Respondent is Rick Lizotte of Fort Wayne, Indiana, United States of America, self-represented.
The disputed domain name <revlonmakeup.net> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2010. On September 3, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 3, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2010. The Response was filed with the Center on September 30, 2010.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 12, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant and its affiliated companies make up a well-known enterprise that sells many different types of goods, particularly cosmetics and other beauty products, around the world. Its worldwide sales last year exceeded USD 1 billion. Complainant owns fourteen trademarks for the word REVLON, standing alone, in the United States of America that are registered with the United States Patent and Trademark Office. The earliest of these submitted with the Complaint is dated 1990, with a claimed first use in commerce of 1950. Complainant holds many other trademarks for REVLON in other countries that have been duly registered with the appropriate governmental authorities.
Complainant has never transacted any business with Respondent and has never authorized Respondent to use any of its trademarks.
Respondent registered the disputed domain name in November 2009. At one time the disputed domain name resolved to a website that featured sponsored links to some of Complainant’s competitors. At the date the Complaint was filed the disputed domain name did not resolve to an active website.
Electronic mail correspondence between the parties began in June 2010, at which time Complainant sent Respondent a cease-and-desist letter, and continued through the end of August. At one point Respondent submitted to Complainant an authorization code for transfer of the disputed domain name, but the transfer failed because the registration was in a “locked status.” When Complainant requested a new code and Respondent’s direction to the registrar to “unlock” the domain name to permit a transfer, Respondent replied with an offer to sell the disputed domain name “for what I have invested into this site [USD] 10,000.00 or best offer.” At this point Complainant filed the Complaint with the Center.
Complainant contends as follows:
1. Complainant holds many valid trademarks for the word REVLON, and the disputed domain name is confusingly similar to these marks. Under longstanding Policy precedent the addition of a common word to a valid trademark does not obviate confusing similarity.
2. Complainant has never authorized Respondent to use Complainant’s marks, and Respondent has never been commonly known by any name that includes the word REVLON. The use to which the disputed domain name was once put, including hyperlinks to Complainant’s competitors, is not legitimate under the Policy.
3. Respondent registered and has used the disputed domain name in bad faith, to take advantage of goodwill associated with Complainant’s trademarks for commercial gain. REVLON is a famous trademark and Respondent was well aware of it when he registered the disputed domain name. Respondent’s offer to sell the disputed domain name for an amount substantially in excess of his cost of registration is further evidence of bad faith.
Respondent contends as follows:
Respondent does not contest Complainant’s trademark rights or deny confusing similarity of the disputed domain name with Complainant’s trademarks. Respondent also acknowledges that at one time the website at the disputed domain name was used to sell Revlon products.
Respondent denies any bad faith and asserts that he was assured by the third party from which he acquired the disputed domain name that his acquisition and use (specifically including sale of Complainant’s products and hyperlinks) of the disputed domain name were “perfectly legal.” His cost for setting up his business, including acquisition of the disputed domain name, approximated his USD 10,000 asking price. He identifies one-off payments of USD 4,000 to one third party to acquire the disputed domain name and related software and another USD 4,000 to another third party for back office activities, and additional monthly charges for hosting and other support. Hence his offering price of USD 10,000 was not made in bad faith.
A. Standard for Decision. Paragraph 4(a) of the Policy requires Complainant to establish each of the following by a preponderance of the evidence:
(1) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) that Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar. There is no dispute in this proceeding as to Complainant’s existing trademark rights or confusing similarity of the disputed domain name with Complainant’s marks, both of which Complainant has proven with competent evidence.
C. Rights or Legitimate Interests. The use to which the disputed domain name was initially put, hyperlinks to competitors of Complainant for “click- through” revenue, is in almost all circumstances deemed not legitimate under the Policy absent Complainant’s consent, which was not given here. Any advice or assurance to Respondent from a third party, such as the web-based service engaged by Respondent, does not render that use legitimate or otherwise excuse conduct that, without more, constitutes a clear appropriation of Complainant’s marks for their trademark value. Nothing in the record suggests any legitimate use at any time, so Complainant has carried its evidentiary burden under this Policy element.
D. Registered and Used in Bad Faith. The third Policy element, registration and use in bad faith, presents one issue for the Panel to consider, whether Respondent’s offer to sell the disputed domain name to Complainant for USD 10,000 is evidence of bad faith. The first example of bad faith found in the Policy is paragraph 4(b)(i), which sets out as evidence of registration and use of the domain name in bad faith “circumstances indicating that you 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.“ (Emphasis added.) In the few cases considering this Policy provision, panels have almost uniformly deemed the italicized phrase to include only those costs directly related to the acquisition and registration of the disputed domain name. Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642, n.3 (“out-of-pocket expenses in obtaining the registration“); BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms, WIPO Case No. D2001-1409 (“price for registering domain names”); CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243. Except when a domain name was purchased from a third party, these costs tend to be a nominal amount. Panels, without much discussion, ordinarily have not considered other costs related to the business maintained at the website to which the disputed domain name resolves, such as preparing a business plan, advertising, legal fees, or accounting fees, to be “directly related to the domain name.”
The circumstances documented by Respondent in this case raise some question about whether only registration costs should be considered in this context. Respondent set up a web-only business, paid one third party for hosting and use of a pay-per-click program and paid another for administrative and legal assistance in establishing that business, and paid periodic fees to keep the website and business operating, giving Respondent a colorable basis for arguing that his offering price reflected entirely “out of pocket cost directly related to the domain name.” Furthermore there is no evidence or any ground to infer that Respondent, at the date he registered the disputed domain name, had a future sale to Complainant or anyone else in mind. The few decisions that have considered the issue appear to apply the conjunctive requirements of paragraph 4(a)(iii) (registered and used) to cases involving a sale or attempted sale of the disputed domain name. See, e.g., Inspection Network USA, LLC v. Dynamo.com LLC, Spam Protected, WIPO Case No. D2008-0937; Telstra Corporation Limited v. Mr. Jeon, WIPO Case No. D2001-1161. Were this case to turn on applicability of paragraph 4(b)(i) this Panel would face a difficult decision.
Other undisputed facts, however, make such a decision unnecessary. Respondent’s use of the disputed domain name falls squarely within another example of bad faith included in paragraph 4(b) of the Policy. Clause (iv) cites as bad faith: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 or of a product or service on your web site or location.” Respondent’s only active use of the website, as he himself admits, was to sell Complainant’s products and to gain revenue from Internet users’ clicking through to Complainant’s competitors. Respondent’s email correspondence with Complainant, and the email communication deemed the Response in this case, indicate that Respondent acquired the disputed domain name with this purpose in mind and with full knowledge of Complainant and the value of Complainant’s marks. Those facts establish both registration and use of the disputed domain name in bad faith, so Complainant has carried its evidentiary burden under this Policy element.
In one sense the Policy drafters’ choice of the words “bad faith” as an element of cybersquatting is unfortunate, as the term in every day English implies malice or intentional misconduct. Respondent here has in many respects acted far more responsibly than the run-of- the-mill cybersquatter. When Complainant requested deletion of any reference to Complainant on Respondent’s website, Respondent complied. He responded in a relatively timely manner to Complainant’s email inquiries, and his offer to sell the disputed domain name to Complainant did not seek a windfall profit, merely recovery of money he had spent in connection with the disputed domain name and related website. He may well have been misled by his vendor when he established his website; the conduct the Panel has found to make out registration and use in bad faith may all be attributable to a third party. Viewed objectively, however, without regard to Respondent’s state of mind, motives, or intent, this conduct, for which Respondent is responsible even if he was mistaken about its legitimacy, falls directly within a category that the Policy identifies as ”bad faith“. That fact resolves this proceeding against him.
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, <revlonmakeup.net> be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Dated: October 15, 2010