WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Revlon Consumer Products Corporation v. Contact Privacy Inc. / ICS Private Whois
Case No. D2013-2043
1. The Parties
The Complainant is Revlon Consumer Products Corporation of New York, New York, United States of America (“US”), internally represented.
The Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / ICS Private Whois of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <pureicenailpolish.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27 and December 2, 2013, 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 the Complainant on December 6, 2013 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 December 6, 2013.
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 with the amendment to the Complaint, and the proceedings commenced on December 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2013.
The Center appointed Arne Ringnes as the sole panelist in this matter on January 21, 2014. 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
The Complainant is a one of the world’s best-known names in cosmetics and beauty care products. The Complainant offers cosmetic products for sale both throughout the US and over the Internet.
The Complainant has used the PURE ICE trademark since at least 1997.
The PURE ICE trademark was first registered in the US in 1998. The Complainant acquired the PURE ICE trademark by assignment from Bari Cosmetics, Ltd. in 2012. The Complainant has also later, on July 5, 2012, filed an application for registration of the trademark PURE ICE in block letters. Further, the Complainant has registrations and/or applications pending for the PURE ICE trademark in other countries, including South Africa, Brazil, Canada, Mexico, all member states of the European Union, Japan and China.
Further, the Complainant is the owner of the domain name <pureicecosmetics.com>.
The disputed domain name was created on September 20, 2011.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark PURE ICE because the disputed domain name incorporates the trademark. The addition of the descriptive term “nail polish” and the “.net” generic Top-Level Domain (gTLD) is not sufficient to avoid such likely confusion.
Further, the Complainant submits that the Respondent does not show any right or legitimate interest in the disputed domain name. The Complainant has not granted the Respondent any rights to use the PURE ICE trademark. The Respondent has not demonstrated that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate interest. Rather, the Complainant submits that the Respondent intends to misdirect Internet traffic to competing companies and services so that it can generate pay-per-click revenue.
According to the Complainant, the disputed domain name has been registered and is being used in bad faith for the following reasons:
(i) It is virtually inconceivable that the Respondent chose to register the disputed domain name without being aware of the existence of the Complainant’s PURE ICE trademark;
(ii) The Respondent has not been authorized by the Complainant to use or register the disputed domain name;
(iii) The only reason for the Respondent’s use of the Complainant’s mark is to intentionally confuse consumers, to trade on the Complainant’s rights and reputation, and to drive traffic to its website all for its own commercial benefit; and
(iv) The Respondent’s placing of the disputed domain name on an auction site, for the purpose of transferring it for an amount in far excess of its registration costs, evidences the Respondent’s bad faith intent to profit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark PURE ICE.
The disputed domain name incorporates the Complainant’s trademark in its entirety, with the addition of the terms “nail polish” and the “.net” gTLD. The Panel finds that the addition of the descriptive term “nail polish” and the “.net” gTLD is not sufficient to avoid a likelihood of confusion.
On this background, and in conclusion, the Panel finds that the Complainant has proved that the condition under the Policy, paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
The Respondent has not contested the Complainant’s allegation that the Respondent lacks rights or legitimate interests in the disputed domain name.
It is generally difficult for a complainant to prove that a respondent does not have any rights or legitimate interests in the domain name at issue. On the other hand, it would be fairly simple for the respondent to demonstrate that it has such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. Previous decisions under the Policy have therefore found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent’s default.
The basis for the Panel’s decision is that the Complainant has not granted the Respondent any rights to use its trademark, and the Respondent is in no way affiliated with the Complainant. The Panel finds that the circumstances mentioned and evidenced by the Complainant, i.e., that the Respondent has not demonstrated that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate interest, are sufficient to establish a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
As the Panel cannot find any indications of the three circumstances that may demonstrate the Respondent’s rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy or any other circumstances indicating such rights or legitimate interests in the case file, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the disputed domain name in bad faith. By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate that the Respondent did not register and is not using the disputed domain name in bad faith.
The Panel finds it unlikely that the Respondent should not have been aware of the Complainant’s trademark PURE ICE when registering the disputed domain name, as this trademark must be considered as widely used and known by the public. The Panel therefore finds that the Respondent could not have been unaware that the registration of the disputed domain name would infringe upon the trademark rights in PURE ICE. The disputed domain name leads to a website on which a page appears with links to other websites belonging to competing companies and services. The Panel is satisfied by the Complainant’s unchallenged evidence that the purpose of the Respondent’s selection of the disputed domain name is to exploit the reputation and goodwill of the Complainant’s trademarks for its own profit, i.e., by a pay-per-click revenue.
On this basis, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, see the UDRP panels’ observations in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and in Etro S.p.A. v. Domain Registrations, WIPO Case No. D2006-0207. The Panel finds that the Respondent’s placing of the disputed domain name on an auction site further supports this finding.
For the various reasons discussed above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under paragraphs 4(b) and 4(a)(iii) of the Policy.
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 <pureicenailpolish.net> be transferred to the Complainant.
Date: January 24, 2014