WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. Polo Ung
Case No. D2002-0250
1. The Parties
The Complainant in this administrative proceeding is PRL USA Holdings, Inc. (hereinafter "PRL"). PRL is a Delaware corporation, with a principal place of business at 103 Foulk Road, Suite 25, Wilmington, Delaware, United States of America.
The Respondent in this proceeding is Polo Ung, who resides in Coral Shores Drive N.E., Calgary, Canada.
2. The Domain Name and Registrar
This dispute concerns the domain name (the "Domain Name").
The Domain Name was registered on February 22, 2001.
The Registrar with whom the Domain Name is registered is Intercosmos, Media Group, Inc. located at 650 Poydras Street, Suite 2311, New Orleans, Louisiana, United States of America.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, as well as the WIPO Supplemental Rules was received by WIPO in electronic format on March 14, 2002, and in hardcopy on March 18, 2002. Payment in the required amount to the Center has been made by the Complainant.
On March 21, 2002, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
On April 26, 2002, a Response was received from the Respondent.
On May 2, 2002, a Notification of Appointment of Administrative Panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant�s request, the appointment notification informed the parties that the administrative Panel would be comprised of a single Panelist, Clive Elliott.
4. Factual Background
PRL is the owner of the POLO trademarks. In 1967, and continuing through to the present, PRL and its predecessors began to use the trademarks, service marks and trade names POLO, POLO RALPH LAUREN, POLO SPORT, POLO JEANS CO. and THE POLO CLUB and a fanciful representation of a polo player on a horse (the "Polo Player Symbol"), on and in connection with various articles of men's and women's wearing apparel, home furnishings and related goods and services.
PRL, by and under the control of the fashion design Ralph Lauren, styles, manufactures and sells, both directly and through related companies and licensees, diverse products -- and renders diverse services � under the Polo Marks. PRL has marketed products, sold and services rendered under the POLO Marks throughout the United States and the world.
Copies of the Certificates of Registration for a variety of registered marks have been provided.
The Respondent argues that a portion of the Domain Name at issue is comprised of the Respondent's legal name (Polo Ung) and that the Respondent has always been known as Polo to friends and family.
5. Parties� Contentions
A. Complainant
The Complainant claims that the Polo Marks are world famous and that Polo products are regularly featured or advertised in publications like The New York Times, Vanity Fair and Vogue. In 1999, Polo and related products designed by Ralph Lauren had world-wide wholesale net sales of $4.2 billion.
The Complainant also claims that $51,375,000 was spent advertising Polo and related Ralph Lauren products. Approximately 800,000 users visit the Home section of each month.
It is asserted that the products sold by PRL and its related companies and licensees under the POLO Marks, and the services rendered under those trademarks have been widely advertised to the purchasing public and to the trade throughout the United States and the world by all means and all types of advertising media, including newspapers, magazines, television, trade publications, and the like. As such, a large and well-established international reputation in the various POLO Marks is claimed.
B. Respondent
The Respondent states that a portion of the Domain Name at issue is comprised of a generic English word �polo�, which means, among other things, "a game played by teams on horseback, with players using long-handled mallets to drive a wooden ball into a goal." Secondly, it is asserted that the Domain Name is also comprised of another generic English word �home�, which means "the place where a person, family, or household lives."
The Respondent asserts that he has every right to use his name in combination with a descriptive word as a domain name.
The Respondent claims that he registered the Domain Name with the sole purpose of hosting an online family photo album as a means of communicating with friends and family. The Respondent also claims that this website is a legitimate non-commercial website that has been in use since its registration and prior to any communication with the Complainant.
The Respondent says that it has never offered the Domain Name for sale and that the website is not intended for commercial gain. It is contended that no attempt has been made to mislead or divert consumers in any way. Furthermore, it is noted that the website has not been registered with any online search engines and thus would not be available through searches on the Internet and the World Wide Web.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
� The Domain Name is identical or confusingly similar to the trade/service mark; and
� The Respondent has no right or legitimate interest in respect of the Domain Name; and
� The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by Paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in Paragraph 4(a)(ii) referred to above.
Domain Name Identical or Similar
Given that "com" is an attribute of the gTLD, it is clear that the various POLO Marks are similar to the Domain Name. It is also clear that the POLO Marks are famous and associated exclusively with the Complainant.
Notwithstanding this, the Domain Name also incorporates the common English word "polo" which has a recognised meaning in relation to a game of sport. The word "home" of course has a specific and well understood meaning, in relation to things "domestic" i.e. insofar as they relate to the "home".
The trade mark and domain name is arguably confusingly similar, given the famous nature of the POLO Marks and notwithstanding the obvious descriptive connotations of the Domain Name. Accordingly, I find that the Complainant makes out its case on this ground.
Respondent has no right or Legitimate Interest
Paragraph 4(c) of the Policy provides an express and complete defence to an allegation of lack of right or legitimate interest. That is, if the domain name holder is commonly known by the domain name, even if he/she/it has not acquired a trade mark or service mark right. The evidence suggests that the Respondent�s legal name is Polo Ung and he is known by that name. Indeed, his web site confirms that "Polo" is not just his name but it is a means by which he and his family are able to identify their activities and whereby his friends and family are able to access his wedding and other photos.
This suggest that the web site is a legitimate one and the descriptor "home" a perfectly appropriate means of identifying what is found on the website.
For some reason the Complainant fails to address this issue in its Complaint, other than in passing. Strangely, the Complainant also refers to the Respondent as "Ung", rather than as "Polo Ung."
The Respondent is entitled to contend, as he does, that he is called "Polo Ung" and that the registration of the Domain Name is legitimate and innocent. If the situation was different it was incumbent on the Complainant to address the matter by way of both submission and evidence. It has not done so. It is not unreasonable to infer that the Complainant either knew or chose to avoid making the necessary inquiries to clarify this matter.
The comments in the WIPO administrative Panel decision, in Miguel Torres, S.A v. The Torres Group, Case No. D2001-1200 are possibly apposite:
"It is well recognized that it is difficult for a Panel to weigh up competing and contested evidence and all Panels have to rely to a large extent on the parties� candor and good faith.
The requirement in Rule 3(xiv) that the Complainant certifies that the information contained in its complaint is to the best of the Complainant's knowledge complete and accurate�. and has not been presented for an improper purpose�." is an important requirement in the process. It places an express requirement on a Complainant to act in good faith and to not use the UDRP for collateral purposes."
I find that pursuant to paragraph 4(c)ii of the Policy that the Respondent is "commonly known by the domain name" at least in material part and is entitled to use the common descriptor "home" with it. As such he has a right or legitimate interest in the registration. Accordingly, it is found the Complainant fails to make out on this ground.
Domain Name Registered and Being Used in Bad Faith
As indicated above, I find that Mr. Ung was entitled to register a domain name corresponding to his Christian name along with the common descriptor "home" and I find no reliable basis for suggesting that such conduct was or is in bad faith.
Accordingly, the Complainant fails to make out this ground.
7. Decision
Therefore, and in consideration to the Complaint�s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15(a) of the Rules, it is found:
(1) that the Domain Name is confusingly similar to the Complainant�s POLO Marks;
(2) that the Respondent has rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name was not registered and is not being used in bad faith by the Respondent.
Therefore, the Complainant is dismissed.
Clive L. Elliott
Sole Panelist
Dated: May 22, 2002
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