Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd
Complainant is Revlon Consumer Products Corporation of New York, United States of America, represented by an internal representative.
Respondent is Moniker Privacy Services of Florida, United States of America / Janice Liburd of Panama.
The disputed domain name <revlonwalk.org> is registered with Moniker Online Services, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 15, 2011. On February 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2011, the Registrar 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 Complainant on March 3, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 4, 2011.
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 Respondent of the Complaint, and the proceedings commenced on March 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 28, 2011.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on April 6, 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.
Complainant is a traditional United States company engaged since 1932 in the manufacture, marketing and sale of beauty products worldwide. Complainant's trademark REVLON is well-known for cosmetics and beauty care products and it was formed through a fanciful combination of the names of the founders of the company: Charles and Joseph Revson and Charles Lachman. The trademark REVLON has no generic or descriptive meaning.
Complainant currently owns more than 2,600 (two thousand six hundred) registrations and/or pending applications worldwide for trademarks that incorporate the REVLON name, including United States Registration Number 3035671 REVLON in international class 3, with a date of first use of July 3, 1932. The trademark has been in continuous use since such date.
Complainant also currently owns more than 350 (three hundred and fifty) domain names incorporating the REVLON trademark, including <revlon.com> under which Complainant's main web page is displayed.
Complainant also owns the domain names <revlonrunrun.com>, <revlonrun.com> and <revlonwalkrun.com>. The latter two of such domain names were respectively transferred to Complainant as a result of prior UDRP proceedings, namely Revlon Consumer Products Corporation v. Above.com, Domain Privacy/Host Master, Transure Enterprise Ltd and David Smith, WIPO Case No. D2010-1497 and Revlon Consumer Products Corporation v. Domain Administrator and Moniker Privacy Services, WIPO Case No. D2010-2091.
Complainant sponsors the EIF Revlon Run/Walk for Women, which is a large single-day fundraiser to support women's cancer research in the United States. This event has taken place since 1993 in Los Angeles and since 1997 in New York City.
The disputed domain name was registered on April 24, 2010.
5. Parties' Contentions
A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the trademark REVLON owned by Complainant; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent did not reply to Complainant's contentions.
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 respect of the disputed domain name; and
The burden of proving these elements is on Complainant.
The Panel is satisfied that Complainant showed that REVLON is a distinctive earlier trademark in relation to the disputed domain name, and that the latter is confusingly similar to such mark.
It is well-settled that when a respondent merely adds generic or descriptive terms to an otherwise distinctive trademark, the domain name is to be considered confusingly similar to the registered trademark. In this case, Respondent added to the REVLON trademark the descriptive term "walk".
There are numerous WIPO UDRP decisions where it was found that the addition of generic terms does not serve to distinguish the domain name from the trademark, but rather, would reinforce the association of the trademark with the domain name (see e.g. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275).
Actually, the inclusion of the term "walk" in Respondent's domain name adds to the risk of confusion in view of Complainant's sponsoring of the EIF Revlon Run/Walk for Women, as already decided in Revlon v. Domain Administrator and Moniker Privacy Services, WIPO Case No. D2010-2091 ("[T]he inclusion of the terms "walk" "run" and the choice the gLTD ".org" in the disputed domain name, renders the entire domain name virtually identical to the fund raising event sponsored by the Complainant").
Therefore, the Panel finds that the disputed domain name <revlonwalk.org> is confusingly similar to the trademark REVLON to which Complainant has rights and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The disputed domain name was registered on April 24, 2010, that is, almost 80 (eighty) years after Complainant started to use the registered trademark REVLON, in 1932. Therefore, the prior rights over such trademark are clearly on Complainant's side and due to the well-known character of Complainant's trademark it is fair to assume that Respondent had prior knowledge of such trademark when it adopted the disputed domain name.
In addition, Respondent does not run any legitimate business activity in connection with the disputed domain name. Respondent uses the disputed domain name for a web page with several sponsored links, in what has been commonly called a "link farm". It is apparent that Respondent used the disputed domain name to trade off of the reputation of Complainant – thus, Respondent did not use the disputed domain name to make a bona fide offering of goods or services.
Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that Respondent has no rights or legitimate interests in respect to the domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.
It has been proven to the Panel's satisfaction that Complainant's trademark REVLON is well-known, and the Panel accepts that Respondent could not likely reasonably ignore the high reputation of the products the trademarks identify.
It has been also shown that in the website in operation under the disputed domain name Respondent hosts a "link farm", i.e., a list of sponsored links, which in the circumstances amounts to unduly taking advantage of the well-known nature of Complainant's mark to attract more Internet users and generate revenue presumably to Respondent's benefit in the form of "pay-per-click".
In this sense, there is little doubt that Respondent intended to earn profit from the confusion created with Internet users, who believe to be accessing Complainant's website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177: "Indeed, by redirecting Internet users looking for the web site of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant's trademark."
It is worth noting that the likelihood of confusion in this case is greatly enhanced by the fact that Complainant sponsors the EIF Revlon Run/Walk for Women, which is a large single-day fundraiser to support women's cancer research in the United States, taking place since 1993 in Los Angeles and since 1997 in New York City. The association with Respondent's domain name and such event is immediate and unavoidable.
Finally, another sign of bad faith is the fact that in the source code underlying Respondent's web site Complainant's REVLON trademark is embedded. Such use of Complainant's trademark shows Respondent's actual awareness of the REVLON trademark and also evidences a conscious effort to divert Internet traffic away from Complainant in violation of paragraph 4(b)(iv) of the Policy. See Tata Sons Limited v. tataconnect, WIPO Case No. D2006-0572 (the use of 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 respondent of complainant's trademark in a metatag "revealed his awareness and knowledge of Complainant's use of 'consitex' as a common law trademark").
Thus, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark and that Complainant has proven that Respondent's registration and use of the disputed domain name was in bad faith, according to paragraph 4(a)(iii) under 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 disputed domain name <revlonwalk.org> be transferred to Complainant.
Gabriel F. Leonardos