INTELLECTUAL PROPERTY RIGHTS

Intellectual property (IP) is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognizedand the corresponding fields of law. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; discoveries and inventions; and words, phrases, symbols, and designs. Common types of intellectual property rights include copyrights, trademarks, patents, industrial design rights and trade secrets in some jurisdictions.

PATENTS
A patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention. The procedure for granting patents, the requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims defining the invention which must be new, non-obvious, and useful or industrially applicable. In many countries, certain subject areas are excluded from patents, such as business methods, treatment of the human body, and mental acts. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission. It is essentially a right to exclude others who are not licensed. A patent does not give the proprietor of the patent the right to use the patented invention, should it fall within the scope of an earlier patent.

PATENT FOR SPORTS SHORTS

CASE STUDY - Turning an IP Dispute into a Business Opportunity

There is a small firm of goldsmiths at Chikpet, Bangalore in the Southern Indian State of Karnataka. Over the years, the goldsmith, assisted by his son, has been creating new designs, making ornaments, and selling them directly to customers. One day, while visiting an upmarket road in downtown Bangalore, he happened to stop at a famous Jewelry retail outlet of a large Indian industrial conglomerate and was horrified to find on display items of jewelry based on some of his original designs. The goldsmith was shell-shocked and did not know what to do. His son, however, decided not to take things lying down. He approached an intellectual property rights (IPR) Attorney at Bangalore. Although the goldsmith had not registered his novel designs under the Design law in India, he was able to produce before the Attorney the a number of paper-based sketches and drawings (protected automatically by copyright) that he had made earlier in respect of the design in question, which clearly indicated the evolution of the designs. A legal notice was sent to the large Indian industrial conglomerate. In reply the large Indian industrial conglomerate's lawyer argued that there was no malafide and, in fact, the designs had been developed independently by their employees and were co-incidentally common. On receiving this reply, the goldsmith's son went through the records of sales. In the sale register, he was able to locate the details of sale to the large Indian industrial conglomerate who had purchased from them a few pieces of this presentation item for distribution as New Year gifts. This turned out to be clinching evidence and the large industrial conglomerate agreed to settle the matter out of court. As a part of the settlement, a lumpsum payment was made to the goldsmith. It was also agreed that the large industrial conglomerate would stop manufacturing this item and would outsource its entire requirements over the next five years from the small firm. This case study provides a number of important insights. Firstly, it shows the importance of keeping good records of any drawings, designs and business transactions that may be used in future as evidence in case of an IP dispute. Admittedly, the case would have been simpler had the goldsmith registered his design under the design law of India in the first place. However, having preserved the drawings in a systematic manner (dated, numbered, signed and properly filed) of the gold ornaments in question and having made proper entries in the sale register showing that the large company had once purchased the items proved crucial in turning the

case in the goldsmith's favor. Secondly, it illustrates the importance of relying on qualified IP advice. Thirdly, it shows how an IP dispute, may be turned into a business opportunity, as the large company has now become a key client of the small firm of goldsmiths.

CASE STUDY 2 UNIFORM DOMAIN NAME DISPUTE

Revlon Consumer Products Corporation v. revlon, Law Chamber

1. The Parties
Complainant is Revlon Consumer Products Corporation, New York, New York, United States of America. Respondent is revlon, Law Chamber, located in Palatine, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <revlonlawchambers.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on February 1, 2011. On February 2, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On February 4, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 Rules for Uniform Domain Name Dispute Resolution Policy, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. In accordance with the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 9, 2011. In accordance with the Rules, the due date for Response was March 1, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondents default on March 2, 2011.

The Center appointed Thomas L. Creel as the sole panelist in this matter on March 17, 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.

4. Factual Background
Complainant attached fourteen (14) United States Certificates of Trademark Registration for the trademark REVLON, standing alone, covering a variety of goods, to its Complaint. These all relate to beauty, personal care or fashion products. The earliest of these is dated 1990 and all were issued before Respondents domain name was registered. Complainant has widely advertised the mark REVLON, often featuring celebrities. Complainants parent company, Revlon, Inc. is frequently referenced in news, financial and business publications and websites. It has its own website at www.revlon.com and a Facebook site at www.facebook.com/revlon. Respondent registered the disputed domain name on June 23, 2010. Before filing the Complaint, Complainant sent a cease and desist letter to the email address provided by Respondent to its Registrar. It received no response to that letter, or to two follow-up emails.

5. Parties Contentions
A. Complainant Complainant asserts it has manufactured, marketed and sold an extensive array of beauty products under the REVLON mark continuously since 1932. RELVON is alleged to be one of the best-known names in cosmetics and beauty care products and is a leading mass-market global cosmetics brand. The mark is a fanciful combination of the names of the companys founders: Charles and Joseph Revson and Charles Lachman, who contributed the L in the REVLON name. REVLON has no generic or descriptive meaning. Complainant and its affiliates (hereinafter sometimes Revlon) are said to currently own more than 700 domain name registrations worldwide. More than 350 of these domain names

are said to incorporate the REVLON trademark and variations thereof. Revlon has said it has maintained a corporate presence on the Internet since May 1997, when its own website, www.revlon.com, was officially launched. Revlon is stated to currently own over 50 United States trademark registrations and/or pending applications for trademarks incorporating the REVLON mark, and more that 2,600 trademark registrations and/or pending applications worldwide for trademarks incorporating the REVLON mark. REVLON alleges products are sold in more than 175 countries and territories worldwide, with 2009 sales of approximately U.S. $1.3 billion. Complainant states it has sponsored numerous television programs and fundraising events. In the 1950s the Complainant was said to be the sole sponsor of the popular television game show The $ 64,000 Question and has sponsored The Ed Sullivan Show, the Academy Awards and advertised on widely viewed television events like the Super Bowl. Complainant states it sponsors the EIF Revlon Run / Walk for women, which is a well-known fundraiser to support womens cancer research. The Complainant has sponsored this annual event since 1993 in Los Angeles and since 1997 in New York City. Complainant lists 38 other UDRP cases where domain names pertaining to its trademarks were transferred to Complainant and asserts that such a transfer has been ordered in each case decided to date. Complainant argues that the disputed domain name is confusingly similar to Complainants trademark for the reasons that it uses the entire REVLON mark. Complainant submits that the addition of .com is non distinctive because it merely adds a generic top-level domain designation. It also asserts that the terms law and chambers are also generic and as such cannot be a distinguishing feature. Indeed, Revlon argues that this addition actually increases the likelihood of confusion because it suggests Revlon has an affiliation with law chambers. Complainant argues Respondent has no rights or legitimate interest in the disputed domain name as Respondent has no relationship with Revlon, it had constructive notice of Complainants rights and that there is no evidence that Respondent uses the disputed domain

name for a bona fide offering of goods and services, has been commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name. Complainant further asserts that the disputed domain name has been registered and is being used in bad faith. It asserts that given the distinctive and fanciful nature of the REVLON trademark and its fame, it is virtually impossible that Respondent was not aware of the REVLON trademark and business when it registered its domain name. This registration with that knowledge, together with subsequent inaction, failure to respond to cease and desist letters and ongoing cyber squatting, infringement and dilution show bad faith. For all these reasons, Complainant requests for transfer of the disputed domain name. B. Respondent Respondent did not reply to Complainants contentions.

6. Discussion and Findings

Under the Uniform Domain Name Dispute Resolution Policy, Complainant has the burden of proving each of the following: (1) that the domain name is identical or confusingly similar to the Complainants mark; (2) that the Respondent has no rights or legitimate interests in the domain name; and (3) that the Respondent registered and is using the domain name in bad faith. The consensus view is that the respondents default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by the UDRP. However, the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by the Complainant from these facts. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the

inferences that flow naturally from the information provided by Complainant. The Panel finds that the contentions set forth above by Revlon are not unreasonable. The Panel hereby adopts them as the Panels findings and take them to be true. The Panel will now review each of the three cumulative elements set forth in the Policy to determine whether the Complainant has complied with such requirements. A. Identical or Confusingly Similar The evidence shows that Revlon currently own over 50 United States trademark registrations and/or pending applications incorporating the REVLON mark and more than 2600 trademark registrations and/or pending applications incorporating the REVLON mark worldwide. Clearly Complainant has rights in a family of registered marks incorporating the REVLON mark. Indeed, the REVLON mark was first used in 1932, over 70 years ago, and reportedly is among the most widely recognized trademarks in the United States of America. The disputed domain name incorporates the REVLON mark in its entirety. Prior panels have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainants mark. Furthermore, addition of a generic word does not normally distinguish the domain names sufficiently to avoid confusion. Prior panels considering the REVLON trademark have similarly so found. However, those REVLON cases concerned use of generic terms which were related to the REVLON goods or activities relating thereto. Here the term law chambers is not necessarily generic since it does not directly relate to the REVLON goods and activities. Revlon has not been shown to have any business relating to furnishing legal services. But the REVLON trademark is not only well-known, it is arbitrary and fanciful. So the use of this mark on unrelated goods or services could likely be associated with the REVLON mark in ordinary purchasers minds. The similarity between the mark REVLON and the domain name <revlonlawchambers.com> is obvious. It is clear that the registered mark REVLON stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered mark.

The current case is distinguishable from the use of a different type of well-known mark which might not have such a range of association. For example, a Ford law chambers might well be associated with a lawyer named Ford (and if so, a panel may expect the Respondent to provide appropriate evidence thereof). Not so with the term REVLON as an arbitrary and fanciful term (and especially in this case, where no evidence has been provided as to revlon being either a personal name or the bona fide name of a law firm). The Panel notes in this regard that the panel in Revlon Consumer Products Corporation v. Milan Tosic and Private Whois Service, WIPO Case No. D2010-1962 found that the addition of jobs to revlon was confusingly similar. This is so even though the services of supplying jobs might not be a service readily associated with the RELVON trademark or the Revlon activities. Likewise, the suffix .com is non distinctive because it is required for the registration of the domain name. Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582. Furthermore, there is nothing in the record to show that the term revlon in the domain name would call to mind anything other than the trademark REVLON. Finally, Respondent had the opportunity to present arguments why the evidence presented of confusing similarity was incorrect. It did not take advantage of this opportunity. The Panel therefore draws the inference that it had no contrary evidence to provide and all reasonable inferences are drawn against it. So this Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainants registered mark, with or without additional generic terms, that is sufficient to establish confusing similarity for purposes of the Policy absent some evidence to the contrary. Considering all of the circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to Complainants registered marks. B. Rights or Legitimate Interests Complainant affirms that Respondent has no permission to use the REVLON mark, nor is Respondent affiliated with Complainant in any way. There is nothing in the record to indicate

that Respondent has any legitimate interests in the disputed domain name. For example, there is no evidence to suggest Respondent has ever used or demonstrated preparations to use, the disputed domain name, or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services. There is no evidence that Respondent has been commonly known by the disputed domain name. There is also no evidence that Respondent is making or intends to make a legitimate non-commercial or fair use of the disputed domain name. Mere registration alone cannot constitute such rights. Furthermore, the use of Complainant's trademark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant. A domain name that gives a false impression to users does not confer legitimate rights or interests. The Panel therefore concludes that Respondent has no right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith The Panel finds that the REVLON trademark is one of the most well-known trademarks in the United States of America and that Respondent knew or should have known of Complainants trademark. While Respondent could have chosen almost any term as its domain name, it chose a name consisting of Complainants trademark. It is inconceivable that Respondent was not aware of the REVLON mark when the disputed domain name was registered. The Panel finds untenable a conclusion that Respondent chose a name which encompasses Complainants Trademark without wishing to trade unfairly on that trademark. Furthermore, under 15 U.S.C. 1072, registration of the REVLON mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainants marks prior to registering the disputed domain names. Indeed, the REVLON mark has been used for over 70 years. The fact that Respondent registered but has not made use of the disputed domain name has no bearing at all on the bad faith elements. It has been established in a number of cases that registration together with inaction and other facts can constitute bad faith use. The Complainant should not have to wait for Respondent to place its products (possibly

competing products) on a website in order to meet the element of bad faith. Otherwise, people everywhere would be allowed to hold hostage any domain name that they see fit. The Panel finds that the Policy that Respondent registered the disputed domain name to attract, for commercial gain, Internet users to Respondents website by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of a product or service. The Panel finds that Complainant has succeeded in proving that the disputed domain name was registered and is being used in bad faith.

7. Decision
For all the foregoing reasons, in accordance with the Policy and 15 of the Rules, the Panel orders that the domain name <revlonlawchambers.com> be transferred to Complainant.

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