WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc .v. Catherine Mary Witham
Case No. D2002-0361
1. The Parties
The Complainant is PRL USA Holdings, Inc of 103 Foulk Road, Suite 2154, Wilmington, DE 19803, United States of America.
The Respondent is Catherine Mary Witham of Mermaid Beach, Queensland, Australia.
2. The Domain Name and Registrar
The domain name at issue is and the Registrar is iH, Inc d/b/a DotR.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on April 17, 2002 [electronic version], and on April 22, 2002 (hard copy). The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is April 24, 2002.
On April 22, 2002, the Center transmitted via email to iH, Inc. d/b/a DotR a request for registrar verification in connection with this case and on the same day DotR transmitted by email to the Center DotRegistrar's verification response confirming that the registrant and administrative contact is Catherine Mary Witham.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on April 24, 2002, this Notification of Complaint and Commencement of the Administrative Proceeding to the addresses provided in the registrar verification. The Center advised that the Response was due by May 14, 2002.
A request by the Respondent for extension of time within which to submit a Response was granted for 10 days expiring May 25, 2002. The Center duly received the Respondent's Response on May 24, 2002 (electronic version). On May 29, 2002, the Center transmitted Acknowledgement Receipt of Response to the Complainant and to the Respondent at their respective addresses.
Having received, on June 10, 2002, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
On July 15, 2002, the Panel issued a Procedural Order requesting the Respondent to provide clarification of certain statements made in and documents annexed to the Response and on the same day the Respondent duly provided the additional information requested. On July 18, 2002, the Complainant then submitted observations in relation to the clarification provided by the Respondent.
The Rules provide that the Panel shall ensure that the parties are treated with equality and that each party is given an opportunity to present its case [Rules, paragraph 10(b)]. The Rules also provide that, in addition to the Complaint and the Response, the Panel may request further statements or documents from either of the parties [Rules, paragraph 12]. The Procedural Order was made pursuant to Rule 12 merely to clarify certain matters for the Panel. The Respondent's answer to that Order did not involve the presentation of new facts or arguments. It was not a Supplemental Complaint of the type which, very exceptionally, a Panelist may permit.
There is, therefore, no entitlement to the Complainant to make its additional Submissions of July 18, 2002. Nevertheless, the Panel has read that Submission which it considers in any event adds nothing of substance to the Complaint and, consequently, has not impacted on the Panel's Decision. That Decision is based upon the submissions identified in the following paragraph.
Having verified the communication records in the case file, the Administrative Panel 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 Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainant's Business
The Complainant is the owner of the well-known POLO trademarks. Since 1967 under the control of the renowned fashion designer, Ralph Lauren, the Complainant has styled, manufactured and sold - both directly and through related companies and licensees - various articles of men's and women's clothing and accessories under the POLO mark in the United States and world-wide.
4.2 The Complainant's POLO trademarks
4.2.1 The Complainant's POLO trademarks, service marks and trade names comprise POLO: POLO RALPH LAUREN: POLO SPORT: POLO JEANS CO: THE POLO CLUB and a fanciful representation of a polo player on a horse [the "polo Player Symbol"].
4.2.2 The Complainant's US trademark registrations for POLO and POLO - formative marks exhibited to the Complaint comprise:
Country
Registration No.
Mark
Class(es)
Application / Registration Date
USA
978,166
POLO by Ralph Lauren
25
October 25, 1971
February 5, 1974*
USA
1,363,459
POLO
25
October 19, 1981
October 1, 1985+
USA
1,378,247
POLO RALPH LAUREN & the Polo Player Symbol
25
July 3, 1985
January 14, 1986**
USA
1,364,971
POLO RALPH LAUREN & the Polo Player Symbol
42
November 13, 1984
October 8, 1985 ***
USA
1,468,420
POLO
25
April 13, 1987
December 8, 1987 ***
USA
1,508,314
POLO by Ralph Lauren
25
February 12, 1988
October 11, 1988*
USA
1,671,466
POLO
21
March 26, 1990
January 7, 1992 *****
USA
1,951,601
POLO SPORT
25
April 12, 1995
January 23, 1996 +
USA
2,260,865
POLO JEANS CO
35
April 27, 1998
July 13, 1999 ++
USA
2,0893,276
POLO
42
February 20, 1996
July 29, 1997 +++
*First use on men's suits and ties in commerce in May 1967
**First use in commerce in 1975
***First use in Commerce March 15, 1980
****First use in Commerce in 1971
*****First use in commerce in November 1989
+First use in commerce on September 1, 1993
++First use in commerce on July 23, 1996
+++First use in commerce on November 1, 1995
4.2.3 The Complainant's goods and services are widely advertised under the POLO marks to both the public and to the trade world-wide through all types of advertising media, including newspapers, magazines, television and trade publications. Those goods and services have come to be known by the purchasing public for their style and design excellence and quality of workmanship. As a result the POLO marks and the goodwill associated with them are of incalculable value to the Complainant.
4.2.4 The Complainant asserts that the POLO marks are so well known that those marks have acquired a secondary meaning and significance in the minds of the purchasing public, so that goods and services sold under those marks are immediately identified by the purchasing public with the Complainant.
4.2.5 In the 1999 financial year the Complaint states that POLO and related products designed by Ralph Lauren had world-wide sales of US$4.2 billion and in the same period over US$51 million was spent advertising POLO and related Ralph Lauren products. The Complaint cites 8 US cases where, it says, the fame of the POLO marks has been recognised. They are
- Gucci America Inc & Polo Ralph Lauren Corporation .v. Action Activewear Inc & Others 7 59 F. Supp. 1060, 1061 (S.D.N.Y. 1991). This was an action for trademark infringement and unfair competition arising out of sale of counterfeit GUCCI and POLO goods. The Court stated:
"The POLO marks include various combinations of the word POLO and RALPH LAUREN with a representation of a polo player on a horse. Such marks are clearly fanciful rather than descriptive or suggestive of the goods so marked. � Fanciful marks such as these constitute "strong" trademarks, which are accorded the broadest protection against infringement."
"It is � clear that plaintiff's marks have acquired secondary meaning in the minds of the public�."
- Polo Fashions Inc .v. Telesforo Fermandez & Huo Inc & Anor 655 F. Supp. 644, 668 (D.P.R. 1987). This was another action against counterfeit goods based on trademark infringement and unfair competition. Again, the Court held that the POLO trademark was a strong mark entitled to broad protection.
"POLO, through its principal and designer Ralph Lauren, has become a nationally and internationally known fashion leader in clothing and related fashion accessories. Also, POLO has acquired a reputation for high quality products�. Accordingly, we find that plaintiff's mark is a strong mark and is therefore entitled to broad protection."
- Of the other 6 cases, 4 also involved counterfeit POLO goods and in all of them the Court recognised the POLO marks as strong trademarks, which had achieved a secondary meaning. Of the others, one concerned infringing embroidery of the Polo Player Symbol, the Court awarding treble damages for wilful trademark infringement. The other concerned an unsuccessful attempt by the Defendant to argue that POLO was a generic description for a certain type of shirt.
4.3 The Complainant's website
The Complainant also refers to its website, an example of which is exhibited to the Complaint featuring a section entitled POLO.COM MAGAZINE, described as "The Ralph Lauren Online Life Style Magazine".
4.4 The Respondent's Business
4.4.1 The Response states that the Respondent is the sole director of Polo Magazine Pty Ltd, an Australian company. That company is the registered proprietor of Australian trade mark registration No. 363, 808 for POLO DOWN UNDER in Class 16 for periodicals relating to polo. That mark was applied for on August 4, 1981, and granted in 1987.
4.4.2 The Response states that the Respondent and her related entities have published periodicals and magazines about Polo since 1981. The publication, entitled Polo Down Under, was first published in 1981. That periodical was acquired by Polo Magazine Pty Ltd on June 24, 1998. Another magazine, entitled Polo Magazine was first published by the Respondent's company in 1994. It is a glossy, quarterly magazine about Polo, the sport, the people and the lifestyle associated with them. The Contents Page from the Winter 1998 [June to August] issue is exhibited to the Response. Third, the Respondent's company also published Polo Calendar Supremo, which was introduced in 1999.
4.4.3 The domain name in issue - - was registered by the Respondent in 1997. The Response exhibits a website captioned
UNDER CONSTRUCTION
containing a news item relating to the Gold Cup of the Americas polo tournament in Wellington, Florida. The exhibit is marked "WINTER 1998" in manuscript. The Respondent states in the additional particulars of the Response that she is currently developing an interactive website that will provide information and services about Polo.
5. The Parties' Contentions
5.1 The Complainant's Case
5.1.1 Identical or Confusingly Similar
The Complainant's case is that it has very strong trademark rights world-wide in the POLO marks and POLO - formative marks, which marks are entitled to broad protection by reason of their well-known status. Hence, the Complainant says that the domain name in issue is confusingly similar to those marks. In support of its case as to confusing similarity the Complainant cited the following 4 cases.
Country Floors, Inc .v. Partnership Composed of Gepner & Ford 930 F. 2d., 1056, 1065 (3rd Cir. 1991). The case concerned trademark infringement and unfair competition of the COUNTRY TILE and COUNTRY FLOORS trademarks registered in respect of ceramic tiles and accessories. The Partnership sold the same goods under the name "Country Tiles". Evidence of actual confusion was brought by the Plaintiff. Finding likelihood of confusion, the US Court of Appeals for the Third Circuit also held
"When the dominant portions of the two marks are the same, confusion is likely."
In re Dixie Restaurants, Inc 105 F. 3d 1405, 1407 (Fed. Cir. 1997). This case is cited for the same proposition. Here, the marks involved were THE DELTA CAFÉ for restaurant services specialising in Southern-style cooking and DELTA for hotel, motel and restaurant services, the latter being the senior mark. Rejecting the later application to register THE DELTA CAFÉ for likelihood of confusion with DELTA, the Court stated
"The identity of the dominant portion of Dixie's mark and the registered mark is especially important in the restaurant industry."
Nina Ricci S.A.R.L. .v. E.T.F. Enterprises Inc 889 D. 2d 1070, 1074 (Fed. Cir. 1989) Concerned a successful opposition by the registered proprietors of the NINA RICCI and other RICCI suffix marks to an application by E.T.F. to register VITTORIO RICCI for clothing, accessories and retail store services. Finding likelihood of confusion, the Court stated
"In reaching this decision, we must reiterate the teaching of our predecessor court that there is no excuse for even approaching the well-known trademark of a competitor � and that all doubt as to whether confusion, mistake, or deception is likely is to be resolved against the newcomer, especially where the established mark is one which is famous�."
Kenneth Parker Toys Inc .v. Rose Art Industries Inc 963 F. 2d 350, 353 (Fed. Cir. 1992) Concerned likelihood of confusion of the application FUNDOUGH for toy modelling compounds in relation to the earlier registered PLAY-DOH mark for the same product. Finding likelihood of confusion, the Court stated
"� the Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark. As a mark's fame increases, the Act's tolerance for similarities between competing marks falls."
5.1.2 Rights or Legitimate Interests
The Complaint states that the Respondent owns no trademark registrations which include the mark POLO, nor does the Respondent do business under the name POLO.
5.1.3 Registered and Used in Bad Faith
The Complaint is based on the assertions set out in the preceding paragraph, plus the further assertion that because of the well-known status of the Complainant's POLO and POLO - formative marks the Respondent could not have been unaware of the Complainant's rights in those trademarks when she registered the domain name in issue.
5.2 The Respondent's Case
5.2.1 Confusingly Similar
The Complainant's commercial success in manufacturing and selling apparel and other items under and by reference to the POLO and POLO - formative marks does not give the Complainant the right to prevent any third party domain names from incorporating the word "polo".
5.2.2 The Respondent cites Diageo plc .v. John Zuccarini WIPO Case No. D2000-0996. The domain names in issue incorporated the well known GUINNESS trademarks and, for example, included . The Panel stated
"� in cases where the Administrative Panel is being guided by the principles developing in the laws of the USA, the appropriate test to apply is the multi-factor test set forth in the decision of the United States Court of Appeals for the Ninth Circuit in AMF Inc .v. Sleekcraft Boats 599 F. 2d 341 (9th Cir. 1979)."
The Sleekcraft factors are directed to whether there is a likelihood of confusion between two marks. These factors are
"� (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines."
Finding for the Complainant on the issue of likelihood of confusion, the Panel stated:
"In considering each element of the test, it is clear to this Administrative Panel that, even if it is agreed that Sleekcraft is the appropriate test to apply where the administrative panel is guided by the laws of the USA, it is obvious that there remains many areas of doubt as to how the various elements of the test can be transposed in its application to disputes involving a comparison of domain names and trademarks."
5.2.3 The Respondent then addresses each of the 8 Sleekcraft factors as follows.
Strength of the Mark
While the Complainant's POLO and POLO - formative marks are well-known for clothing, the suffix "mag" is an abbreviation for "magazine" and the Respondent's history of publishing periodicals and magazines about Polo since 1981 gives her the stronger rights in a domain name descriptive of magazines about Polo, hence polomag.
Proximity of the Goods
There is none between clothing and the Respondent's said business.
Similarity
The Respondent admits that the domain name in issue is similar to the Complainant's trademarks.
Actual Confusion
The Complainant has provided no evidence of any actual confusion.
Marketing Channels
Totally different.
Type of goods and degree of care likely to be exercised by the Purchaser
Members of the public coming across the domain name in issue are far more likely to associate it with the sport of Polo rather than the Complainant's clothing products.
Defendant's intent in selecting the mark
The Respondent submits that her bona fides in selecting the domain name in issue is apparent.
Likelihood of expansion of product lines
Inapplicable.
5.2.4Applying the Sleekcraft factors - which are clearly applicable to cases of this sort under the Policy - there can be likelihood of confusion.
5.2.5 Rights or Legitimate Interests
First, the Respondent has made use of the domain name in connection with a bona fide offering of goods before being put on notice of this dispute. The domain name in issue was registered in 1997 and was used in the Winter of 1998 [see, paragraph 4.4.3 above], well before the Complainant's own website [see, paragraph 4.3 above] was established in - the Respondent believes - 2001. That use is fair use and is without intent to cause competitive injury to the Complainant.
5.2.6 Registered and Used in bad Faith
Demonstrably on the facts [see, paragraph 4.4. above], the domain name was registered and is being used in good faith. The Complaint contains no evidence of bad faith. The suggestion in the Complaint that the Respondent owns no POLO trademark registrations nor does business under the POLO name [see, paragraph 5.1.2 above] is wrong on the facts. The fact that the Complainant's POLO and POLO - formative trademarks are well-known has no relevance to good faith on the facts of this case.
5.2.7 The Respondent takes the view that any proof of her lack of legitimate interest and/or registration and use in bad faith is "utterly lacking in this case". She cites PRL USA Holdings Inc .v. Alvaro Collaz,o WIPO Case No. D2002-0108 as a similarly inappropriate attempt by the Complainant to assert its POLO and POLO - formative marks against the domain name where, on the facts, the Respondent was found to be selling polo ponies in Argentina, his website describing those horses and providing certain regulations governing the sport of polo in Argentina. The Website, as in this case, bore no reference to clothing or to any other business than polo ponies. The Panelist in that case concluded
"Complainant has made its Polo brands world famous, in many areas of goods and services. This commercial and marketing success does not, however, give Complainant the exclusive right to all domain names employing the word polo. That fact is especially noteworthy in this case, where Complainant has shown no competitive injury. The Policy and the Rules require proof of no legitimate interest and bad faith. That proof is utterly lacking in this case."
6. Discussion and Findings
6.1The Policy paragraph 4(a) provides that the Complainant must prove each of the following
(i)that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii)the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii)the domain name has been registered and is being used in bad faith.
6.2Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
6.3Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.4. Confusingly Similar
In the light of the Panel's findings in relation to paragraphs 4a(ii) and (iii) below, it is not necessary to decide on the issue of confusing similarity. The Panel would, however, observe that the US cases cited by the Complainant in this respect [see, paragraph 5.1.1 above] all involved identical goods or services. By contrast, in this case the parties' businesses are completely different. Similarly, the cases cited by the Complainant as evidence of the well-known status of the POLO and POLO - formative trademarks all concerned goods of the same nature, the majority of the cases involving counterfeit POLO products.
6.5. Rights or Legitimate Interests
The Complainant's assertion that the Respondent owns no trademark registrations which include the mark POLO is wrong. The Respondent is the registered proprietor of the Australian trademark POLO DOWN UNDER for "periodicals relating to polo" in Class 16 which dates from 1981. The Complainant also mistakenly asserts that the Respondent does not do business under the POLO name. She has published periodicals and magazines including the word POLO since 1981 [see, paragraphs 4.4.2 and 4.4.3 above] and appears to have operated a website relating to the sport of polo under the domain name in issue since the Winter of 1998. On the evidence the Response demonstrates the Respondent's rights and legitimate interests in the domain name in issue. The Complaint, therefore, fails to meet the requirement of paragraph 4a(ii) of the Policy.
6.6. Registered and Used in Bad Faith
Similarly, the Complaint plainly fails either to establish any of the paragraph 4b circumstances or to establish bad faith registration and use by other evidence. The Respondent is correct in drawing a parallel between the facts of this case and of the e- case [WIPO Case No. D2002-0108 referred to in paragraph 5.2.7 above].
7. Decision
For all the foregoing reasons the Complainant has failed to meet the requirements of paragraphs 4a(ii) and (iii) of the Policy and, in the circumstances, the Complaint is denied.
David Perkins
Sole Panelist
Dated: July 29, 2002
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