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WIPO Domain Name Decisions D2002

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WIPO Domain Name Decisions D2002 Powered By Docstoc
					WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Revlon Consumer Products Corporation v. Laurent D. Morel Case No. D2002-0215

1.

The Parties 1.1 The Complainant is Revlon Consumer Products Corporation, a Delaware Corporation, with its principal place of business at 625 Madison Avenue, New York, New York 10022, United States of America. The Respondent is Laurent D. Morel, an individual residing at 6665 N. Fresno Street, Apt. 210, Fresno, California, 93710, USA, but whose address is listed in the Registrar‟s WHOIS database as 7675 N. First Street Apt. 211, Fresno, California, 93720, United States of America.

1.2

2.

The Domain Name and Registrar 2.1 2.2 The disputed domain name is <revlongirls.com>. The registrar of the disputed domain name is Namesecure.com, a company having a corporate administration office located at 2190 Meridian Park Boulevard, Concord, California, 94520, United States of America.

3.

Procedural History 3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center (“WIPO”) on March 5, 2002. On March 11, 2002, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy (the “Supplemental Rules”). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.

3.2

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3.3

On March 11, 2002, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent. On April 5, 2002, WIPO transmitted notification of Respondent's default to the Respondent. On April 18, 2002, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence (“Statement and Declaration”). On April 18, 2002, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO. On April 19, 2002, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the “Panel”) in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by May 3, 2002. The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

3.4

3.5

3.6

3.7

4.

Factual Background 4.1 Complainant Revlon Consumer Products Corporation owns the rights to the registered trademark REVLON for: “shampoo,” which was registered June 18, 1957, as U.S. Reg. No. 647,222, with a claimed first use on May 17, 1950; “perfume, cologne, nail enamel, nail conditioner, mascara, eye shadow, lipstick, cosmetic creams and lotions, face makeup and pressed power,” which was registered April 28, 1981 as U.S. Reg. No. 1,152,080, with a claimed first use on March 7, 1932; “hair care products – namely, shampoos, conditioners, treatments, moisturizers, coloring preparations, relaxers, permanents, hairsprays and hair styling preparations,” which was registered December 4, 1990, as U.S. Reg. No. 1,625,545, with a claimed first use on September 20, 1966; “hand held implements; namely, tweezers, eyelash curlers, black-head removers, manicure sticks, nail buffers, nail files, nail shapers, nail smoothers, nail clips, nail nippers, nail scissors, cuticle nippers, cuticle trimmers, toenail clips, toenail nippers, toenail scissors, utility scissors, safety scissors, baby scissors; hand-operated barber shears, thinning shears and hairstyling shears,” which was registered October 15, 1991 as U.S. Reg. No. 1,660,540, with a claimed first use on January 1, 1950; “horological and chronometric instruments; namely, watches and clocks,” which was registered September 27, 1994 as U.S. Reg. No. 1,856, 240, with a claimed first use as early as November, 1993;

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“electric hair curlers and electric curling irons” and “hand-held electric hair dryers,” which was registered March 28, 1995 as U.S. Reg. No. 1,886,476, with a claimed first use as early as July, 1993; “lingerie, brassieres, hosiery, shawls, stockings, tights,” which was registered June 4, 1996, as U.S. Reg. No. 1,978,991, with a claimed first use on April 21, 1995; “vitamin and mineral supplements,” which was registered December 10, 1996 as U.S. Reg. No. 2,022,195, with a claimed first use on January 4, 1996; “handbags, tote bags, purses and cosmetic bags sold empty” and “plastic containers, namely, personal organizers for cosmetics,” which was registered December 24, 1996 as U.S. Reg. No. 2,025,709, with a claimed first use on November 13, 1993; “electric razors,” which was registered August 26, 1997 as U.S. Reg. No.2,091,640, with a claimed first use on October 14, 1996; and “shaving sets consisting of razors and razor blades,” which was registered September 23, 1997, as U.S. Reg. No. 2,100,320, with a claimed first use on May 19, 1997.

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4.2

The Respondent registered the domain name < revlongirls.com> on March 3, 2000. The domain name is not active.

5.

Parties’ Contentions A. Complaint

Complainant states: “Complainant has manufactured, marketed and sold an extensive array of beauty products continuously since 1932. The REVLON brand is one of the world‟s best-known names in cosmetics, skin care, fragrance and personal care and is a leading mass-market cosmetics brand. REVLON‟s global brand name recognition, product quality and marketing expertise have enabled Complainant to create one of the strongest consumer brand franchises in the world, with REVLON products sold worldwide. . . . Complainant has actively sold REVLON products in at least 175 countries world wide through wholly-owned subsidiaries established in 20 countries outside the United States and through a large number of distributors and licensees elsewhere around the world.” “Complainant has used the REVLON mark since the company was founded in 1932. 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.” . . . “Complainant, or one of its subsidiaries, affiliates, or related companies, currently own 403 domain name registrations worldwide. 120 of these domain name registrations incorporate the REVLON trademark.”

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“Complainant has maintained a presence on the Internet since May 1997, when its own web site <www.revlon.com> was officially launched.” . . . “Complainant considers the REVLON trademark one of its most valuable assets and therefore trademark protection is very important to its business. Complainant, or one of its subsidiaries, affiliates, or related companies, currently owns 35 United States registrations and/or pending applications for trademarks incorporating the REVLON mark and 2,704 registrations and/or pending applications for trademarks incorporating the REVLON mark worldwide.” . . . “The trademark registrations are valid, subsisting, unrevoked, and are exclusively and extensively used by Complainant, its corporate affiliates or authorized licensees and serve as prima facie evidence of Complainant‟s ownership and the validity of the trademarks.” . . . “Respondent has no relationship with nor does Respondent have permission from Complainant for the use of the trademark.” “On or about August 30, 2000, Complainant became aware of the Domain Name registered by Respondent. The Domain Name, <revlongirls.com>, is a combination of the entire REVLON mark and the generic word „girls‟. According to the Registrar‟s WHOIS database, the Domain Name was registered on March 3, 2000.” . . . “By letter dated August 31, 2000, Complainant requested that Respondent cease and desist from the further use of the REVLON trademark. . . . The cease-anddesist letter was addressed to Respondent at the address shown in the Registrar‟s WHOIS database . . . and sent via Federal Express. Federal Express returned the letter to Complainant as undeliverable. . . . On December 15, 2000, Complainant wrote a second cease-and-desist letter and sent it via e-mail using the e-mail address shown in the Registrar‟s WHOIS database, i.e., <ticrab@yahoo.com>.” … “On December 18, 2000, Respondent communicated with Complainant by telephone. During this conversation Respondent acknowledged receipt of the cease-and-desist letter sent via e-mail dated December 15, 2000. Respondent stated that he had moved from the address shown on the Registrar‟s WHOIS database to his current address, 6665 N. Fresno, Apt. 210, Fresno, CA 93710. Respondent requested that all future correspondence relating to the subject Domain Name be sent to the new address. Respondent acknowledged Complainant‟s rights in and to the REVLON trademark and agreed to transfer the Domain Name to Complainant in exchange for reimbursement of his out-ofpocket expenses.” “After the December 18, 2001 telephone conversation, Respondent sent Complainant an e-mail communication in which he further acknowledged receipt of the cease-and-desist letter dated December 15, 2001. In this e-mail, Respondent contends that he created the name <revlongirls.com>. In his attempt to distinguish <revlon.com> from <revlongirls.com>, Respondent acknowledges that the word “REVLON” belongs to Complainant but insists that he was the only one to combine the trademark of Complainant with the term „girls‟. Clearly Respondent knew at the time of registration that Complainant had a right in and to the REVLON trademark. Finally, in exchange for the transfer of the Domain

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name to Complainant, Respondent requests compensation for his “creation”, in excess of fair and reasonable out-of-pocket expenses.” . . . “As of the date of this Complaint, Respondent has not submitted to Complainant proof of his fair and reasonable out-of-pocket expenses in connection with the registration of the Domain Name. Rather by e-mail communication to Complainant dated February 22, 2001, Respondent again stated that he deserved credit for creating the name <revlongirls.com.>” . . . “Respondent has not attempted to demonstrate, . . . nor has Complainant been able to determine, that (i) before notice was given to Respondent of this dispute, that Respondent used the Domain Name in connection with a bona fide offering of goods or services; or that Respondent has been commonly known by the Domain Name, even if he had not acquired any trademark or service mark rights; or

(ii)

(iii) that Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumer or to tarnish the trademark or service mark at issue.” . . . “There is no evidence whatsoever that Respondent ever had any plans to make use of the Domain Name. Respondent has not made any use of the Domain Name either before or since receiving notice of Complainant‟s cease-and-desist letter. Respondent has not activated a web site even though Respondent has held the Domain Name since March 2000. On several occasions, Complainant has attempted to locate an active web site without success.” B. Response

Respondent did not file a response to the complaint.

6.

Discussion and Findings 6.1 The Uniform Domain Name Dispute Resolution Policy (the “Policy”), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding. It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). WIPO forwarded notification of the complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS
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6.2

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database. WIPO also forwarded notification of default to the Respondent via email. 6.4 Based on the methods employed to provide the Respondent with notice of the complaint and default the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that: (i) Respondent‟s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and Respondent has no rights or legitimate interests in respect of the domain name; and

6.5

(ii)

(iii) Respondent‟s domain name has been registered and is being used in bad faith. In the administrative proceeding, the Complainant must prove that each of these three elements are present. 6.6 As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Based upon the Complainant‟s registration and continuous use of the trademark REVLON, the Complainant clearly has rights in the mark. Complainant asserts that the domain name <revlongirls.com> is identical or confusingly similar to the trademark REVLON. The Panel finds that the domain name <revlongirls.com> wholly incorporates the REVLON mark.

6.7 6.8

6.9

6.10 The Panel finds that the only actual differences between the domain name <revlongirls.com> and the trademark REVLON are the “www,” “.com,” and the word “girls.” The Panel finds that the “www” and “.com” are trivial differences. The Panel finds that the word “girls” is a neutral addition to the trademark REVLON, and as such, constitutes a difference insufficient to avoid confusion with the registered trademark. Nokia Corp. v. Nokia-girls.com, WIPO Case No. D2000-0912 (October 20, 2000). 6.11 The Panel finds the <revlongirls.com> domain name is confusingly similar to the registered trademark REVLON, and that the Complainant has established it has rights in the mark REVLON, pursuant to paragraph 4(a)(i) of the Policy. 6.12 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent‟s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:

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(i)

before any notice to you [Respondent] 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 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

(ii)

(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. 6.13 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <revlongirls.com>. 6.14 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <revlongirls.com> pursuant to paragraph 4(a)(ii) of the Policy. 6.15 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) states: (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 outof-pocket costs directly related to the domain name.

6.16 The Panel finds that the mere holding of a domain name can constitute use in bad faith. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000). 6.17 On December 18, 2000, during a telephone conversation, Respondent agreed to transfer the domain name <revlongirls.com> to Complainant in exchange for reimbursement of Respondent‟s out-of-pocket expenses. 6.18 To date, the Respondent has not submitted to Complainant proof of his fair and reasonable out-of-pocket expenses in connection with the registration of the domain name <revlongirls.com>. 6.19 Following the December 18, 2000 telephone conversation, Respondent sent a message to Complainant via email, in which he suggested that he would agree to transfer the domain name <revlongirls.com> to the Complainant in exchange for US $1000.00. Respondent‟s message, sent on December 18, 2000, stated, in part: “Receiving this email was somehow „offending‟ because I came up with that name and never tried to use it with bad intent or bad faith. Never tried to sell it either. I also understand your position. Trying to protect your company‟s position on the market. I also read about trademarks for domain names. I could register it for something around $1,000 in order to make sure I was not treated as a „criminal‟ by „owning‟ half a name which is revlongirls.com and in this case, it is not revlon.com but revlongirls.com. Once again, please understand that I feel
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disappointed that I would have to give up something I created. I know there is the word revlon in it but I also know that nobody else except me created revlongirls.com.” 6.20 The Panel finds that the Respondent‟s December 18, 2000 email message constitutes an offer to sell the domain name <revlongirls.com> to the Complainant for US $1,000.00. 6.21 In view of all of the evidence submitted, the Panel finds that the Respondent‟s indirect offer to sell the domain name <revlongirls.com> to the Complainant for $1,000 is in excess of any reasonable out-of-pocket costs that could have been associated with the registration and/or transfer of the disputed domain name. 6.22 In view of all of the evidence available, the Panel finds that the Respondent‟s implicit offer to sell the domain name <revlongirls.com> for $1,000.00, followed by Respondent‟s repeated refusals to transfer the domain name to the Complainant constitutes registration and use of the domain name in bad faith. 6.23 The Panel finds the Complainant has established that the Respondent registered and used the domain name <revlongirls.com> in bad faith, pursuant to paragraph 4(b)(i) of the Policy.

7.

Decision As the Complainant, Revlon Consumer Products Corporation, has established that the Respondent, Laurent D. Morel, has engaged in abusive registration of the domain name <revlongirls.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <revlongirls.com> be transferred to the Complainant.

________________________________ R. Eric Gaum Sole Panelist Dated: May 3, 2002

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