WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Domain Admin, InTrust Domain Names
Case No. D2010-1933
1. The Parties
Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America, represented internally.
Respondent is Domain Admin, InTrust Domain Names of Falcon, Colorado and Colorado Springs, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <revlonskinlights.com> is registered with DropWeek.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2010. On November 11, 2010, the Center transmitted by email to DropWeek.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 12, 2010, DropWeek.com, Inc. transmitted by email 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 November 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2010. Respondent did not submit any formal response, but did communicate with the Center via email on November 15 and 18, 2010.
The Center appointed Gary J. Nelson as the sole panelist in this matter on December 13, 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.
4. Factual Background
Complainant and certain of its affiliates around the world are the owners of the well-known REVLON trademark for cosmetics and related beauty care products. Revlon branded products are sold in approximately 175 countries, and the REVLON trademark has been used continuously for more than 75 years and hundreds of millions of dollars have been spent on advertising and promoting the Revlon brand around the world.
Complainant and certain of its affiliates around the world are the owners of the REVLON SKINLIGHTS and SKINLIGHTS trademarks for cosmetics and related products. Revlon Skinlights and Skinlights branded products have been sold in several countries throughout the world and have been in use by Complainant since 2000.
Complainant owns United States Trademark Registrations for REVLON and for REVLON SKINLIGHTS and for SKINLIGHTS for cosmetics and related goods.
According to the information provided by the concerned registrar, Respondent appears to have registered the <revlonskinlights.com> domain name on April 27, 2010. The corresponding website does not currently appear to be operational, although Complainant has attached a print out of a web page that seems to present Internet users with an opportunity to purchase the disputed domain name.
5. Parties’ Contentions
Complainant owns trademark rights in REVLON and REVLON SKINLIGHTS and SKINLIGHTS for cosmetic and related products.
The REVLON trademark is a fanciful combination of the names of Complainant’s founders: Charles and Joseph Revson and Charles Lachman, who contributed the “l” in the Revlon name. Revlon has no generic or descriptive meaning.
Complainant has sold many products under the SKINLIGHTS and REVLON SKINLIGHTS trademark for almost ten years. Many of these products are currently sold on websites such as “www.amazon.com”, one of the world’s largest online retailers.
The trademarks SKINLIGHTS and REVLON SKINLIGHTS are coined terms which have no generic or descriptive meaning.
Complainant’s parent company, Revlon, Inc., is a publicly traded company and is frequently in news, financial and business publications and websites.
Complainant has spent hundreds of millions of dollars over several decades advertising and promoting Revlon branded products. In 2009, Complainant spent USD 230.5 million in advertising its portfolio of products worldwide, with the majority of this amount being spent on the REVLON trademark. Revlon branded products are advertised on television, in print, on the Internet, and on point-of-sale materials. Complainant’s first print advertisement, outside of trade journals, appeared in 1935 in the magazine “The New Yorker”.
Complainant pioneered the use of celebrities in its advertising, featuring prominent actors, singers, and models. Complainant has also sponsored numerous television programs and fundraising events.
Complainant established trademark rights in the REVLON and REVLON SKINLIGHTS and SKINLIGHTS trademarks prior to the date when Respondent registered the disputed domain name.
Respondent has no relationship with Complainant and has not received permission from Complainant to use any REVLON trademark or the REVLON SKINLIGHTS or the SKINLIGHTS trademarks, and does not have rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions. However, Respondent did indicate that the <revlonskinlights.com> domain name was registered by one of its members due to a backorder, and that Respondent has no desire to retain the <revlonskinlights.com> domain name and has no intention to use the domain name. Respondent has further indicated its willingness to either transfer the disputed domain name to Complainant or to delete the domain name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in 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
Complainant has established that it owns prior rights in the REVLON SKINLIGHTS trademark, and the disputed domain name is confusingly similar, and nearly identical, to Complainant’s REVLON SKINLIGHTS trademark.
Complainant owns United States Trademark Registration No. 2,503,121 for REVLON SKINLIGHTS. The registration date for this trademark (i.e., October 30, 2001) precedes the date upon which Respondent registered the disputed domain name (i.e., April 27, 2010).
Accordingly, Complainant has established rights in its REVLON SKINLIGHTS trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.).
The disputed domain name, <revlonskinlights.com>, is confusingly similar, and nearly identical, to Complainant’s REVLON SKINLIGHTS trademark because the disputed domain name incorporates the entirety of Complainant’s REVLON SKINLIGHTS trademark and merely removes the “space” between the words “revlon” and “skinlights”, along with the generic top-level “.com” domain name. Neither the removal of a “space” or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See EKKIA SAS v. LINECOM, WIPO Case No. D2009-1124 (finding the disputed domain name <equitheme.com> to be identical to complainant's EQUITHEME trademark); see also Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of complainant combined with a generic word or term).
The Panel finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <revlonskinlights.com> domain name, or that it is commonly known by any name consisting of, or incorporating the words “revlon” and “skinlights” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its REVLON SKINLIGHTS trademark.
Upon receipt of the Complaint, Respondent contacted Complainant and indicated that the registration of the <revlonskinlights.com> domain name was inadvertent and due to a backorder by one of its members. Respondent also indicated that it had no desire to retain the <revlonskinlights.com> domain name and that it had no intention to use the domain name in the future. Respondent also offered to transfer ownership of the domain name to Complainant, or to simply delete the disputed domain name. All of these admissions by Respondent are further evidence that Respondent does not have rights or a legitimate interest in the disputed domain name.
The Panel finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
In regard to <revlonskinlights.com>, Respondent maintained a corresponding website that solicited the sale of this domain name to Internet users. The misappropriation of the goodwill associated with another’s well-known trademark for the purpose of attracting unwary Internet Users to a website for no other reason than to sell the domain name is evidence of bad faith. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 (exploitation of the reputation of trademarks by diverting internet users is a common example of bad faith).
The Panel also finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the REVLON SKINLIGHTS trademark. Respondent’s awareness of Complainant’s REVLON SKINLIGHTS trademark may be inferred because the mark was registered with the USPTO prior to Respondent’s registration of the disputed domain name and since Complainant’s trademarks are well-known. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that [r]espondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
The Panel finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
For all 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, <revlonskinlights.com> be transferred to Complainant.
Gary J. Nelson
Date: December 14, 2010