WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Revlon Consumer Products Corporation v. Swaleheen Akhtar

Case No. D2011-1156

1. The Parties

The Complainant is Revlon Consumer Products Corporation of New York, United States of America (the “United States” or “US”), internally represented.

The Respondent is Swaleheen Akhtar of Karachi, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <revlonlipgloss.net> is registered with Mesh Digital Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2011. On July 8, 2011, the Center transmitted by email to Mesh Digital Limited a request for registrar verification in connection with the disputed domain name. On July 12, 2011, Mesh Digital Limited 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 the Respondent of the Complaint, and the proceedings commenced on July 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2011.

The Center appointed James Bridgeman as the sole panelist in this matter on August 16, 2011. 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

As no Response has been filed, there are no undisputed facts as such; however the Complainant has furnished prima facie evidence of a number of trademark registrations and the WhoIs information relating to the disputed domain name.

The United States registered trademarks relied upon by the Complainant include the following trademarks presently registered in the name of the Complainant:

REVLON, number 2,797,953, dated December 23, 2003 registered on the Principal Register in respect of goods in international class 9;

REVLON, number 1,886,476, dated March 28, 1995 registered on the Principal Register in respect of goods in international classes 9 and 11;

REVLON number 2,025,709, dated December 24, 1996 registered on the Principal Register in respect of goods in international classes 18 and 21;

REVLON number 3,035,671, dated December 27, 2005 registered on the Principal Register in respect of goods in international class 3;

REVLON number 2,770,851, dated October 7, 2003 registered on the Principal Register in respect of goods in international classes 21 and 26;

REVLON number 3,035,673, dated December 27, 2005 registered on the Principal Register in respect of goods in international class 21;

REVLON number 2,886,731, dated September 21, 2004 registered on the Principal Register in respect of goods in international class 20;

REVLON number 2,891,418, dated October 5, 2004 registered on the Principal Register in respect of goods in international class 11;

REVLON number 2,886,630, dated September 21, 2004 registered on the Principal Register in respect of goods in international class 3;

REVLON number 2,662,778, dated December 17, 2002 registered on the Principal Register in respect of goods in international class 26;

REVLON number 2,886,732, dated September 21, 2004 registered on the Principal Register in respect of goods in international class 9;

REVLON number 2,789,089, dated December 2, 2003 registered on the Principal Register in respect of goods in international class 25;

The Pakistan registered trademark relied upon by the Complainant is registration number 24716 dated November 25, 1955 registered in respect of goods in international class 3. According to the information provided by the Complainant, the trademark is presently registered in the name of Revlon (Suisse) S.A., a Société Anonyme existing under the laws of Switzerland.

The disputed domain name <revlonlipgloss.net> registration was created on November 17, 2010.

5. Parties’ Contentions

A. Complainant

The Complaint claims rights in the REVLON trademark based on the above-listed trademark registrations and a global portfolio of trademark registrations owned by itself, its subsidiaries, affiliates, or related companies and at common law through the reputation and goodwill established by the continuous use of the REVLON mark in respect of beauty products by the Complainant for over 75 years.

The Complainant submits that the trademark registrations relied upon are valid and subsisting, and are exclusively and extensively used by the Complainant, its corporate affiliates, and/or authorized licensees and serve as prima facie evidence of the Complainant’s ownership and the validity of the trademarks. See 15 U.S.C. § 1115. The Complainant further submits that the above listed United States trademark registrations are conclusive evidence of the Complainant's exclusive right to use the marks in connection with the stated goods and services. See 15 U.S.C. § 1115(b).

Addressing its claim to rights in the REVLON mark at common law, the Complainant submits that 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. The trademark REVLON is a fanciful combination of the names of the 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.

The Complainant submits that in 2009, its net sales were USD 1,295,900,000.00 (USD 1.2959 billion), with USD 747.9 million in net sales in the United States and USD 548 million in other countries around the world. The Complainant submits that it sells Revlon products in approximately 175 countries through wholly-owned subsidiaries in 14 countries and through a large number of distributors and licensees elsewhere around the world. In addition, the Complainant also has several licensees that manufacture and distribute Revlon-branded electric hair dryers, hair straighteners, curling irons, eyewear, false eyelashes, wigs, hairpieces and collectible dolls in many countries around the world.

The Complainant’s parent company, Revlon, Inc., is a publicly traded company (trading as REV on the New York Stock Exchange) and is frequently referenced in news, financial and business publications and websites. The Complainant’s portfolio of trademarks also includes ALMAY, COLORSILK, COLORSTAY, CHARLIE, GATINEAU, MITCHUM, and ULTIMA II, among others.

The Complainant submits that it has spent hundreds of millions 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. Revlon advertises REVLON products on television, in print, on the Internet, and on point-of-sale materials. The Complainant's first print advertisement outside of trade journals appeared in 1935 in the magazine The New Yorker.

The Complainant has provided copies of advertisements for Revlon products published from 1932 to date together with further information relating to the marketing of the Revlon branded products including sample magazine articles.

The Complainant asserts that it has maintained a presence on the Internet since May 1997, when its own website at “http://www.revlon.com” was officially launched. The Complainant claims to own more than seven hundred (700) Internet domain name registrations more than three-hundred fifty (350) of which incorporate the REVLON trademark and variations thereof. A copy of the current Revlon home page at the “www.revlon.com” address is attached as an annex to the Complaint.

The Complainant refers to a number of prior UDRP proceedings that it has taken to protect its REVLON trademark against other respondents, and submits that in each case that has been decided to date the panel ordered that the disputed domain name be transferred to the Complainant.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant's REVLON trademark.

The Complainant submits that as in the present case, the incorporation of the trademark in its entirety in the disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s mark, e.g. RevlonConsumer Products Corporation v.lONE Inc.,WIPO Case No. D2010-1000.

The addition of ”.net” suffix to the disputed domain name is non-distinctive because it is a generic top-level domain (gTLD) designation for registration of a domain name and does not avoid likelihood of confusion. Bellsouth Intellectual Property Corp. v.Melos aka ThomasStergios, WIPO Case No. DTV2001-0013. See also Nokia Corporation v.Nokiagirls.com a.k.aIBCC, WIPO Case No. D2000-0102.

The Complainant argues that the addition of descriptive, generic terms to a trademark is generally not a distinguishing feature, but actually increases the confusing similarity. The Complainant submits that in the present case the addition of the generic term “lip gloss” (which is a product the Complainant produces and sells) to the distinctive and famous REVLON trademark does not avoid confusing similarity, but rather adds to it. See, e.g.,Revlon Consumer Products Corporation v.PrivacyProtect.org / Naga Prasad, WIPO Case No. D2010-1250 (” ... the addition of the generic word 'lipstick' to the distinctive and well-known REVLON trademark owned by the Complainant does not prevent confusion in the minds of Internet visitors”); RevlonConsumer Products Corporation v. Registration Private / Wendy Julien, WIPO Case No. D2010-1931 (“[T]he panel concludes that the addition of the term “foundation” is not sufficient to refute the confusing similarity between the disputed domain name and the Complainant's trademark... ”); RevlonConsumer Products Corporation v. Mike Iser and WhoisGuard, WIPO Case No. D2010-1370; RevlonConsumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936 (“[T]he addition of the descriptive word “beauty” to the Complainant's REVLON trademark, by referencing the goods for which the mark is known, increases the likelihood of confusion.”); and Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602 (where the Panel ordered transfer of <revloncosmetics.info>, <revlononline.info>, and <revlonstore.info> to Revlon).

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has no relationship with the Complainant. The Respondent has no permission from the Complainant to use any REVLON trademark.

According to the concerned registrar’s WhoIs database, the Respondent registered the disputed domain name on November 17, 2010.

The Complainant has furnished a printout of the website to which the disputed domain name resolves in an annex to the Complaint. The Complainant submits that the website to which the disputed domain name resolves is an infringing website and incorporates the Complainant's mark REVLON through text and links. Additionally, the Complainant’s website features images of several products by competitors of the Complainant, including, for example, Dior, LipFusion, Lancome, and others.

The Complainant further submits that the website to which the disputed domain name resolves does not offer goods or services under the Complainant’s REVLON trademark and does not disclose whether the Respondent has any relationship with the Complainant as the trademark owner.

The Complainant additionally submits that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent had, at a minimum, constructive knowledge of the Complainant’s rights because the disputed domain name was registered well after many of the Complainant's trademark registrations issued. Further, pursuant to 15 U.S.C. § 1072, the registration of the REVLON trademark constitutes constructive notice of the mark. Numerous panels under the Policy have held that where a complainant has valid trademark rights in a trademark comprising the disputed domain name, and where such rights exist in the home country of the registrant, the principles of constructive notice in that jurisdiction may fairly be applied, and the Respondent may be presumed to have notice of the trademark. See, e.g. Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384, about the distinctiveness and international reputation of the REVLON trademark. See RevlonConsumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936, where the panel cited the international fame of the REVLON trademark in ordering transfer of the domain name to Revlon. See also Revlon v. Mike Iser and WhoisGuard, WIPO Case No. D2010-1370 (ordering transfer of <revlonnailpolish.com>), Beiersdorf AG v. Good DealCommunications, WIPO Case No. D2000-1759, Deutsche Telekom AG v.Pluto Domain Services Private Limited, WIPO Case No. D2008-1916 and Deutsche Telekom AG v. WirelessWarehouse, WIPO Case No. D2005-0723.

Furthermore the Complainant submits that the Respondent has not attempted to demonstrate, and the Complainant has not been able to determine,

(i) that before notice was given to the Respondent of this dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain name, even if the Respondent had not acquired any trademark or service mark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant submits that the Respondent is not and has not been commonly known by the disputed domain name. The website to which the disputed domain name resolves contains images of several lip gloss products by competitors of the Complainant in addition to text and links incorporating the Complainant’s REVLON mark.

Accordingly, the Complainant argues that the Respondent is attempting to confuse consumers by use of the Complainant’s REVLON mark throughout the website to which the disputed domain name resolves. Such use by Respondent is not a bona fide, legitimate use of the disputed domain name. See Hoffmann-La Roche Inc. v. Igor Richko, WIPO Case No. D2010-0904; Tiffany (NJ) LLC,Tiffany and Company v. Thomas Stanek, WIPO Case No. D2009-0143.

The Complainant argues that it has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and, as the Respondent has failed to demonstrate legitimate interests in the disputed domain name or rebut the prima facie case, this Panel should accordingly make a finding that the Respondent lacks rights or a legitimate interests in the disputed domain name.

The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith in violation of paragraph 4(b)(iv) of the Policy as evidenced by

(a) the fame and distinctiveness of the Complainant’s REVLON mark;

(b) the Respondent’s use of the Complainant’s REVLON mark in text throughout website to which the disputed domain name resolves;

(c) the inclusion of metatags with the Complainant’s mark in the code of the website; and

(d) the maintenance by the Respondent of the website that is infringing the Complainant’s rights despite several notifications from the Complainant.

The Complainant submits that the REVLON mark is a famous, coined term. Given the highly distinctive and fanciful nature of the REVLON trademark and its use in connection with cosmetics and makeup, including eyeshadow, it is virtually inconceivable that the Respondent chose to register the disputed domain name without being aware of the existence of the Complainant's REVLON trademark and business. See the above-mentioned WIPO Cases Revlon v. Easy Weight Loss Info, supra; Revlon v. DomainManager, supra; see also Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WlPO Case No. D2000-0163, Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Accordingly, the Respondent has no rights with respect to the disputed domain name, which was registered and is being used in bad faith. See, e.g., RevlonConsumer Products Corporation v. Brandy Farris, WlPO Case No. D2003-0291; DaimlerChrysler Corporation v. Web4COMM SRL Romania, WIPO Case No. DRO2006-0003 (“the registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use”); see also the above-mentioned WIPO Case Veuve Cliquot v. The Polygenix Group Co., supra (the domain name “is 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”).

The Complainant submits that the Respondent is using the REVLON trademark in the disputed domain name to misappropriate the goodwill of the Complainant and redirect Internet traffic intended for the Complainant for its own purposes. The website at “www.revlonlipgloss.net” incorporates the REVLON trademark throughout the text and links. 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); and Hoffman-La Roche Inc. v.Max Richka, WIPO Case No. D2010-0481.

The Complainant points to paragraph 4(b)(iv) of the Policy and argues that in the present case there are circumstances that indicate that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant submits that such use is evidence of bad faith registration and use on behalf of the Respondent.

Additionally the Complainant submits that the Respondent deliberately embedded the Complainant’s REVLON trademark in the source code underlying the website to which the disputed domain name resolves. The Complainant submits that such activity is illustrated in the printout of the source code for the website that has been provided in an annex to the Complaint.

The Complainant submits that such use of the Complainant’s REVLON trademark demonstrates the Respondent’s awareness of the REVLON trademark and is also evidence of his bad faith in his conscious effort to divert Internet traffic away from the Complainant in violation of paragraph 4(b)(iv) of the Policy. See Tata Sons Limitedv.tataconnect, WIPO Case No. D2006-0572 (the use of the Complainant's trademark in metatags is, on its own, evidence of registration and use in bad faith); and Consitex S.A. v.Mr. Hugo Bazzo,WIPO Case No. D2003-0520 (use by the Respondent of the Complainant’s trademark in a metatag “revealed his awareness and knowledge of Complainant's use of 'consitex' as a common law trademark”).

The Complainant argues that since the Respondent has maintained the infringing website over the Complainant’s objections, such silence and ongoing cybersquatting, infringement and dilution is further evidence of the Respondent’s bad faith. See Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v.Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v.Ray Chen, WIPO Case No. D2001-1242.

In conclusion, the Complainant submits that this Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. MichaelRobertson,WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). See also Altavista Company v. Grandtotal Finances Ltd.,WIPO Case No. D2000-0848; Société Des Bains De Mer Et Du Cercle Des Etrangers A Monacov. Iggi Networks Media Group, WIPO Case No. D2000-1324.

For all the foregoing reasons, the Complainant requests this Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Having considered the Complainants submissions and the evidence adduced with the Complaint, this Panel finds that the Complainant has rights in the REVLON trademark inter alia through its above-listed United States trademark registrations.

The disputed domain name <revlonIipgloss.net> consists of four elements namely the words “revlon”, “lip” and “gloss” and the gTLD extension “.net”.

It is well established that for the purposes of making a comparison between a trademark relied upon by a complainant and a disputed domain name, a panel may normally ignore the “.net” gTLD extension.

In the present case, the remaining elements of the disputed domain name are the combination of the Complainant’s distinctive trademark REVLON, which is a coined word and has no other meaning together with the descriptive words “lip” and “gloss”.

This Panel accepts the Complainant’s argument that in the circumstances of the present case, the combination of the words “lip” and “gloss” with the Complainant’s distinctive trademark does not serve in any way to distinguish the disputed domain name from the Complainant’s mark and the obvious reference to cosmetic products in fact increases the risk of confusion.

This Panel finds therefore that the Complainant has succeeded in the first element of the test in paragraph 4 of the Policy.

B. Rights or Legitimate Interests

It is well established that for the purposes of the Policy, once the Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name the onus shifts to the Respondent to establish such rights or interest.

In the present case the Complainant is the owner of a very well-known trademark REVLON. The Complainant has no business or other relationship with the Respondent and the Respondent has no permission to use the Complainant’s REVLON trademark.

According to the Registrar’s WhoIs database, the disputed domain name was registered on November 17, 2010 and given the extent of the Complainant’s reputation and rights established both by trademark registration and use of the REVLON mark prior to that date, on the balance of probabilities the Respondent has not acquired any trademark rights in the disputed domain name.

Furthermore, the Complainant has furnished a printout of the website to which the disputed domain name resolves as an annex to the Complaint and it is obvious that the Respondent has not established the website for any legitimate or noncommercial purpose. The Respondent is clearly seeking to take advantage of the Complainant’s goodwill in the REVLON mark. The website to which the disputed domain name resolves refers to cosmetics and beauty products. The reference to the Complainant’s trademark both as the dominant element of the disputed domain name itself, in the content posted on the website to which the Respondent has arranged or permitted the disputed domain name to resolve and the use of the Complainant’s REVLON mark in the metatags associated with the website to which the disputed domain name resolves lead this Panel to conclude that, on the balance of probabilities, the Respondent has not used the disputed domain name for any legitimate commercial activity nor is the Respondent putting the disputed domain name to any noncommercial use.

The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and in the absence of any Response or explanation from the Respondent, this Panel finds that, on the balance of probabilities, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore succeeded in the second element of the test in paragraph 4 of the Policy.

C. Registered and Used in Bad Faith

On the evidence before this Panel, REVLON is a distinctive, coined term that has been used by the Complainant’s group of companies as its principal trademark for 75 years, during which time the Complainant has built up a worldwide reputation and goodwill in the mark through its registrations of the REVLON trademark and its extensive use of the mark in association with the marketing and sales of its beauty and cosmetics products.

In the absence of any Response or explanation from the Respondent, this Panel accepts the Complainant’s submission that, given the highly distinctive and fanciful nature of the REVLON trademark and its use in connection with beauty products and cosmetics, it is virtually inconceivable that the disputed domain name was chosen and registered without the registrant being aware of the existence of the Complainant's REVLON trademark and business.

In reaching this conclusion, this Panel is particularly conscious that the Complainant has maintained a presence on the Internet since May 1997, when it launched its principal website at “http://www.revlon.com” and the Complainant currently owns more than three-hundred fifty (350) Internet domain names that incorporate the REVLON trademark and variations thereof. Without needing to decide the issue on the basis of the Complainant’s arguments relating to the application of the doctrine of constructive knowledge under the laws of the United States, this Panel finds that it is most improbable that the registrant of the disputed domain name did not become aware of the Complainant’s reputation, domain names and website when the disputed domain name was being registered.

In the absence of any Response or explanation from the Respondent and given the distinctive and fanciful character of the REVLON mark, the references to the Complainant’s mark in the disputed domain name, in the content of the website to which the disputed domain name resolves and in the metatags associated with the Respondent’s website, the intentional association between the disputed domain name and cosmetics, this Panel is convinced and finds that the Respondent registered and is using the disputed domain name to take predatory advantage of the Complainant’s REVLON trademark and the reputation and goodwill of the Complainant in order to redirect Internet traffic intended for the Complainant for his own purposes.

This Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

On the evidence therefore this Panel finds that the disputed domain name has been registered and is being used in bad faith.

The Complainant has therefore succeeded in the third and final element of the test in paragraph 4 of the Policy also and is entitled to succeed in this Complaint.

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 <revlonlipgloss.net> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: August 26, 2011