The Complainant is Revlon Consumer Products Corporation of New York, NY, United States of America represented internally.
The Respondent is WhoisGuard/Jason E. Johns of Westchester, CA, United States of America and Stafford, the United Kingdom of Great Britain and Northern Ireland, respectively.
The disputed domain name <almayfoundation.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2010. On October 21, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 22, 2010, eNom 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 October 29, 2010 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 October 29, 2010.
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, and the proceedings commenced on November 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 7, 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.
The Complainant and its affiliated companies make up a well-known enterprise that sells many different types of goods around the world. Its total worldwide sales last year exceeded USD one (1) billion. The Complainant is best known for its cosmetics, beauty and make up products. Beauty products under the ALMAY trademark have been manufactured for almost 80 years.
The Complainant has rights in the ALMAY trademark, for which it holds more than three hundred (300) registrations around the world. The Complainant’s trademarks are registered in several jurisdictions, including the United States and Europe. In addition the Complainant owns more than 450 domain name registrations worldwide. Eighty (80) of these domain names incorporates the ALMAY trademark and variations thereof.
The disputed domain name was created on March 28, 2010.
The Complainant contends that the disputed domain name is confusingly similar to its registered ALMAY trademark. The addition of the term “foundation” is merely descriptive.
The Respondent lacks rights or any legitimate interests in the disputed domain name. The Complainant has never transacted any business with the Respondent and has never authorized the Respondent to use any of its trademarks. The Respondent had at a minimum constructive knowledge of the Complainant’s rights. In addition, the Respondent has no rights with respect to the disputed domain name given the distinctiveness and international reputation of the ALMAY trademark. Finally, the Respondent is not and has not been commonly known by the disputed domain name.
The Respondent registered and has used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. (See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437).
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. These elements are:
(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 such domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has established its trademark rights in ALMAY as evidenced by the trademark registrations submitted with the Complaint in several jurisdictions.
The Panel is also prepared to find that the domain name <almayfoundation.com> is confusingly similar to the Complainant’s trademark ALMAY, as the name ALMAY is clearly the dominant element of the disputed domain name.
As a general principle, the addition of generic or descriptive terms to a trademark (in this case “foundation”) does not distinguish the domain name from the trademark and is not sufficient to avoid confusing similarity between the two. (See Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000; and Revlon Consumer Products Corporation v. Whois Privacy Services Pty Ltd, /Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2010-1070). Furthermore, the word “foundation” is used here as a suffix, meaning that the overwhelming significance of the domain name resides in its opening word “ALMAY” which is the same as the registered trade marks. (See The Coca-Cola Company v. PrivacyProtect.org / Acosta Jose Julian, WIPO Case No. D2010-0335).
The addition of the generic top-level domain suffix “.com” does not change this finding.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Here the Panel finds that there is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Complainant’s trademarks. The Complainant has prior rights in the trademarks, including trademarks registered in Respondent’s jurisdiction, which precede the Respondent’s registration of the disputed domain name by several years. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) 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; or
(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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a 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 website or location or of a product or service on your website or location.”
The above four circumstances are not exclusive and bad faith may be found by the Panel alternatively.
The Complainant’s trademarks are widely known, and it is evident to the Panel that they were known to the Respondent when registering the disputed domain name. Said domain name is highly unlikely to have been registered if it were not for the Complainant’s trademarks. (See Revlon Consumer Products Corporation v. Privacy-Protect.org/Milan Kovac, WIPO Case No. D2010-1806).
At the time of the filing of this UDRP complaint, according to the Complainant, the disputed domain name displayed several links to Amazon.com and also contained several images taken from the Complainant’s home page (located at the domain name <www.almay.com>). This is evidenced by the screenshots available at Annex 10 of the Complaint. Currently the web site has no content at all.
The Panel concludes that disputed domain name's corresponding website had at the time of filing of the Complaint a rather professional appearance, which was capable of giving the visitor the impression that it was a website that is somehow endorsed by the Complainant; a clear case of bad faith. (See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100).
As to the current use of the disputed domain name, the Panel finds, having examined all of the facts and circumstances of this case, that it is being passively held, which in this matter amounts to bad faith use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Bayer Schering Pharma AG v. New World Express LLC / udrp D2010-1387, WIPO Case No. D2010-1387).
The Complainant sent a cease and desist letter and several emails to the Respondent between July and October 2010. (See Annex 3 and 12 of Complaint). No reply has been received. The Panel finds the Respondent’s conduct in failing to reply to the Complainant’s cease and desist letter to be a compounding factor in bad faith. (See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and <scottforesmanandcompany.com>, WIPO Case No. D2009-0266).
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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 <almayfoundation.com> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: December 27, 2010