WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc., and Ralph Lauren Media, LLC v. Morrison and Associates
Case No. D2001-0255
1. The Parties
The Complainants in this administrative proceeding are PRL USA Holdings, Inc., a Delaware corporation, with a principal place of business at 103 Foulk Road, Suite 254, Wilmington, Delaware 19803, USA, and Ralph Lauren Media, LLC, a Delaware limited liability company, with a principal place of business at 650 Madison Avenue, New York, New York 10022, USA (hereinafter individually and collectively referred to as "Complainants").
The Respondent in this proceeding is Morrison and Associates ("Respondent"), the registrant of the domain names in issue with a listed mailing address of 6568 Bradford Ct., Rancho Cucamonga, California 91701, USA.
2. The Domain Names and Registrar
The domain names in issue are and .
The registrar of the domain names in issue is Internet Domain Registrars, d/b/a R ("Registrar") located at 475 Sansome Street, #570, San Francisco, California 94111, USA.
3. Procedural History
On February 16, 2001, the Complainants filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain names and and paid the required filing fee for appointing a single member Panel. On February 22, 2001, the Center sent an "Acknowledgement of Receipt of Complaint" to the Complainant.
On February 23, 2001, a "Request for Verification" concerning the domain names was sent to the Registrar. On February 26, 2001, the Registrar provided a Registrar Verification Response to the Center stating, in pertinent part, that: (i) it had received the Center's notification concerning the domain names in issue; (ii) it is the registrar of the domain names and ; (iii) "Morrison and Associates" is the current registrant of the domain name registrations with a listed mailing address of 6568 Bradford Ct., Rancho Cucamonga, California 91701, USA; and (iv) the domain names in issue are currently under registrar-lock in the Shared Registry Server pending arbitration.
On February 27, 2001, the Center found the Complaint to be in compliance with the formal requirements of ICANN�s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN�s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO�s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
On February 27, 2001, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" and the Complaint to the Respondent at the e-mail addresses, postmaster@ and postmaster@, and to the postal address, e-mail address and facsimile number listed in the domain name registrations. Copies of the Notification and Complaint were also sent to ICANN, the Registrar and the Complainants. When the Notification and Complaint were sent to the e-mail addresses, postmaster@ and postmaster@, and to the fax number listed in the registrations, error messages were received indicating non-delivery. The Center did not receive error messages or notices of non-delivery when the Notification and the Complaint were sent to the e-mail and postal addresses listed in the registrations for the Respondent.
On March 21, 2001, after the twenty day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainants.
On March 26, 2001, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. On March 27, 2001, the Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center. On March 30, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.
Based upon a request from the Panelist, the Center sent an Administrative Panel Procedural Order No. 1 on April 20, 2001, to the parties requesting further information concerning the Complainants� bad faith assertions and evidence of whether or not there have been or are any Web sites accessible at the domain names in issue. On April 25, 2001, the Complainants submitted an "Additional Submission" to the Center. No response was received from the Respondent in response to the Panelist�s request.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist also finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint or to the Administrative Panel Procedural Order No. 1. The Panelist shall therefore draw inferences from the Respondent's defaults as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Additional Submission, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based on eleven U.S. federal registrations for RALPH LAUREN and RALPH LAUREN formative marks, including Reg. No. 984,005 for the mark RALPH LAUREN and Design, Reg. No. 1,050,722 for the mark RALPH LAUREN and Design, Reg. No. 1,203,658 for the mark RALPH LAUREN and Design, Reg. No. 1,469,151 for the mark RALPH LAUREN and Reg. No. 1,624, 989 for the mark RALPH LAUREN. Copies of the registration certificates for these marks were attached as Exhibit C to the Complaint. The Complaint is also based on the company name, Ralph Lauren Media, LLC. The formation of Ralph Lauren Media, LLC, was publicly announced on February 7, 2000, as a joint venture between the Polo Ralph Lauren Corporation and NBC and certain affiliated companies.
Both of the domain names in issue were registered on February 7, 2000, to the Respondent and each domain name resolves to a "Domain Name Holder" Web page provided by the Registrar. Copies of the Whois records for the domain names in issue were attached as Exhibit A to the Complaint and copies of the corresponding Web pages were attached to the Additional Submission.
5. Parties� Contentions
Complainants
The Complainant, PRL USA Holdings, Inc., asserts that it is the owner of eleven federal trademark registrations for RALPH LAUREN and RALPH LAUREN formative marks for use in connection with clothing and retail store services and that Ralph Lauren Media, LLC under license from PRL USA Holdings, Inc., uses the famous RALPH LAUREN marks in connection with multimedia projects via the Internet, broadcast, cable and print. The Complainants assert that the registrations of the RALPH LAUREN mark are conclusive evidence of the incontestability of the RALPH LAUREN mark and attached copies of the registration certificates to the Complaint as Exhibit C.
The Complainants assert that Ralph Lauren of the RALPH LAUREN marks is world famous and has won numerous fashion awards. The Complainants assert that he and his products are regularly featured or advertised in publications like The New York Times, Vanity Fair and Vogue and in fiscal year 1999 alone, Mr. Lauren�s products had worldwide wholesale net sales of $4.2 billion. During that same time period, the Complainants assert that more than $51,375,000 was spent advertising Mr. Lauren�s products. In addition, the Complainants assert that the fame of the RALPH LAUREN marks has long been recognized by numerous courts, decisions of which were attached as Exhibit D.
The Complainants assert that the domain names and are identical or confusingly similar to the Complainants� federally registered RALPH LAUREN and RALPH LAUREN formative marks owned by PRL USA Holdings, Inc., and are also identical to the Complainant�s company name, Ralph Lauren Media, LLC.
The Complainants assert that, on March 14, 2000, it provided explicit written notice to the Respondent of the Complainants� prior rights in the RALPH LAUREN mark, and in which it demanded that the Respondent withdraw its registrations for the and domain names (a copy of this letter attached as Exhibit F). The Complainants assert that, after receiving no response, they again contacted the Respondent on June 7, 2000, reiterating their previous demands, to which they again did not receive a response.
The Complainants assert that the Respondent, which does business under the name of Morrison and Associates, has no rights to the name or mark RALPH LAUREN. In addition, the Complainants assert that there is no evidence to indicate that the Respondent owns any trademark registrations, which are comprised, in whole or in part, of the mark RALPH LAUREN, does not do business under the name comprised in whole or in part of the mark RALPH LAUREN, and is not commonly known by any name which includes the RALPH LAUREN name or mark.
The Complainants assert that the Respondent has registered and used the and domain names in bad faith because: (1) the Respondent does not own any trademark registrations which include the mark RALPH LAUREN, nor does it do business under the name RALPH LAUREN, nor is Ralph Lauren, the name of any individual associated with the Respondent; (2) due to the fame of the RALPH LAUREN marks, the Respondent can hardly allege that it was unaware that the mark is owned by another entity; (3) the Respondent�s domain names are identical to the company name of the Complainant, Ralph Lauren Media, LLC; and (4) the Respondent did not respond to either the notice letter, sent return receipt requested, by PRL USA Holdings, Inc.�s counsel or to the follow-up letter.
The Complainants further assert that the Respondent did not register the domain names in issue until long after the RALPH LAUREN marks became famous and that there cannot be any other explanation for the Respondent�s registration of these domain names except that the Respondent, by registering the domain names incorporating the world-famous RALPH LAUREN marks, intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant�s RALPH LAUREN marks, as to the source, sponsorship, affiliation or endorsement of the Respondent�s Web sites. The Complainants assert that at the very least, this conduct raises a presumption of bad faith, which the Respondent has chosen not to rebut.
Respondent
No responses were received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holder�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist can only rule in a complainant�s favor after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Names Identical or Confusingly Similar to the Mark
A complainant in a proceeding brought under the Policy must have rights in the relevant trademark or service mark cited in that proceeding. In the present proceeding, although the Complainant, PRL USA Holdings, Inc., asserts ownership in the marks filed to support the Complaint, the trademark documentation provided by the Complainants did not identify PRL USA Holdings, Inc., as the owner of these registrations. Nor did the Complainants provide guidance in the Complaint as to the relationship between the Complainants and the various companies identified as the mark owners in the submitted copies of the registration certificates. Online searching concerning the cited registrations, however, verified that the Complainant, PRL USA Holdings, Inc., is the last listed owner of these registrations with the U.S. Patent and Trademark Office. The Panelist therefore finds this sufficient to conclude that the Complainants have rights in the RALPH LAUREN and RALPH LAUREN formative marks cited in the Complaint.
Comparing the second-level domain "ralphlaurenmedia" of the domain names in issue with the Complainants� mark RALPH LAUREN, the Panelist finds that the domain names in issue are confusingly similar to the Complainant�s mark and that Element (i) has been satisfied. (Footnote 1)
Element (ii) - Rights or Legitimate Interests in the Domain Names
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder�s rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder�s 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
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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.
The Complainants assert that at no time have they ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use their marks or the company name, Ralph Lauren Media, LLC, in any manner or form. Nor has any evidence been presented that the Respondent, before notice of this dispute, was using or making demonstrable preparations to use the domain names in issue in connection with any bona fide offering of goods or services or has been commonly known, as an individual, business or otherwise, by these domain names. Although the domain names in issue do resolve to Web pages, such "Domain Name Holding" pages do not support a finding that the Respondent was making a legitimate noncommercial or fair use of the domain names. Thus based upon the Complainants� assertions and the lack of evidence to show otherwise, the Panelist finds that the Respondent has no rights or legitimate interests in the domain names in issue and that Element (ii) has been satisfied.
Element (iii) - Domain Names Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 the holder�s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder�s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder�s website or location.
Based upon the uncontested evidence submitted by the Complainants, the Panelist finds that the Respondent had knowledge of the Complainants' mark RALPH LAUREN and particularly, the Complainants' company name, Ralph Lauren Media, LLC, when registering the domain names and . This finding is predicated on the fact that the domain names in issue were registered on the same day that a press release was issued announcing the formation of a new company, Ralph Lauren Media, LLC. Coupled with the fact that the Respondent registered this new company name in both the .COM and .NET Top Level Domains together with the above findings that the domain names in issue are confusingly similar to the Complainants' mark RALPH LAUREN and that the Respondent has no rights or legitimate interests in the domain names, the Panelist finds that the Respondent registered these domain names in bad faith.
The Policy also requires that the Complainants present evidence of the Respondent using the domain names in issue in bad faith. While Paragraph 4(b) of the Policy sets forth four specific circumstances of bad faith registration and use, the Panelist notes that it is well established that evidence of bad faith use is not limited to these circumstances, but in given factual situations, "being used in bad faith" can also be found by inaction or "passive holding" of a domain name by a respondent. Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO D2000-0003, � 7.9 (February 18, 2000).
Viewing the evidence and assertions submitted, the Panelist finds the Respondent's inactions result in the domain names being used in bad faith and base this finding on: (i) the Complainants' marks having a strong reputation and being widely known; (ii) the domain names in issue resolving merely to "Domain Name Holding" Web pages since the registrations thereof; and (iii) no evidence being presented of any type of actual or contemplated legitimate noncommercial, good faith or fair use of the domain names since they were registered by the Respondent over a year ago. The Panelist thus concludes that the Respondent registered and is using the domain names in issue in bad faith and that Element (iii) has therefore been satisfied.
7. Decision
The Panelist concludes that: (i) the domain names and are confusingly similar to the Complainants� mark RALPH LAUREN; (ii) the Respondent has no rights or legitimate interests in these domain names; and (iii) the Respondent has registered and is using these domain names in bad faith. The Panelist therefore requires that the registrations of the domain names and be transferred to the Complainant, PRL USA Holdings, Inc.
Marylee Jenkins
Sole Panelist
Dated: May 31, 2001
Footnotes:
1. The Complainants have also asserted that the domain names in issue are identical to the company name, Ralph Lauren Media, LLC. Based upon the Panelist's finding that the domain names in issue are confusingly similar to the Complainant�s registered mark RALPH LAUREN, it is not necessary to make a finding of whether there is a common law right in the name and whether the domain names in issue are identical thereto. (back to text)
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