WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. Mark Fletcher
Case No. D2002-0388
1. The Parties
The Complainant is PRL USA Holdings, Inc., a Delaware (United States of America) corporation with its principal place of business located at 103 Foulk Road, Suite 25, Wilmington, DE 19803, United States of America. The Complainant is represented by Anthony F. Lo Cicero of Amster, Rothstein & Ebenstein located at 90 Park Avenue, New York, New York 10016, United States of America.
The Respondent is Mark Fletcher whose address is 15 Mills Avenue, Newhall, Sutton Coldfield, West Midlands, B76 1RW, United Kingdom. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is . The domain name is registered with Core Internet Council Of Registrars located at World Trade Center II, 29 route de Pre-Bois, CH-1215 Geneva, Switzerland. (the "Registrar").
3. Procedural History
The Complaint submitted by the Complainant was received by electronic mail on April 25, 2002, and in hard copy on April 29, 2002, by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center").
On April 29, 2002, a request for Registrar verification was transmitted by the the Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent, Mr. Mark Fletcher, is the current registrant of the domain name.
- Provide full contact details available in the Registrar�s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") is in effect.
- Indicate the current status of the domain name.
By email dated April 29, 2002, the Registrar advised the Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration .
- The Respondent Mark Fletcher of 15 Mills Avenue, Newhall, Sutton Coldfield, West Midlands, B76 1RW, United Kingdom, is shown as the current registrant of the domain name.
- The administrative contact is Domains Manager (COCO-473866), Tech House The Royal Works, Coleshill Street, Sutton Coldfield, Birmingham B72 1SJ, England. The Technical contact is TotalNIC Hostmaster, P.O. Box 383, Dickson, ACT, 2602 Australia.
- The UDRP applies to the registration.
- The domain name registration is currently active (�production�).
- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply "the Policy").
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("the Rules"), on April 30, 2002 the Center transmitted by post-courier and by email and fax a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN. The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On May 15, 2002, a package containing the Notification of Complaint and the Complaint was returned from the Respondent's postal address by courier.
No Response was received by the Center from the Respondent within the prescribed time. A Notification of Respondent Default was issued on May 22, 2002.
The Complainant elected to have its Complaint resolved by a single Panelist. The Center invited Mr. Ross Carson to be the Panelist. It transmitted a statement of acceptance to Mr. Carson and requested a declaration of impartiality and independence.
The Panelist forwarded to the Center the Statement of Acceptance and an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On May 30, 2002,the Center forwarded to the Panelist by courier the Complaint and submissions. In the absence of exceptional circumstances, the Panel is required to forward its decision by June 13, 2002.
4. Factual Background
(a) The Trademarks
The Complainant owns the well known RALPH LAURENT trademarks including the following United States Trademarks for RALPH LAUREN and RALPH LAUREN-formative marks:
Reg. No. 1,053,873 registered December 7, 1976 for RALPH LAUREN and Design for frames for prescription and non-prescription lenses, and complete sunglasses.
Reg. No. 1,057,453 registered February 1, 1977 for POLO BY RALPH LAUREN for frames for prescription and non-prescription lenses, and complete sunglasses.
Reg. No. 2,175,394 registered July 21, 1998 for RALPH for frames for prescription and non-prescription lenses, and complete sunglasses.
Reg. No. 978,166 registered February 5, 1974 for POLO BY RALPH LAUREN for men's suits, slacks, ties, sweaters, shoes, shirts, hats, belts, socks and ladies' blouses, skirts, suits and dresses.
Reg. No. 984,005 registered May 14, 1974 for RALPH LAUREN & Design for suits, overcoats, sweaters, ties, shirts and pants.
Reg. No. 1,050,722 registered October 19, 1976 for RALPH LAUREN & Design for women's clothing, namely, topcoats, raincoats, jackets, suit jackets, suit coats, sport coats, sport jackets, blazers, blouses, shirts, shirt jackets, pants, skirts, dresses, sweaters, tee shirts, hats and scarves.
Reg. No. 1,449,733 registered July 28, 1987 for RALPH LAUREN for rattan and wicker furniture and pillows.
Reg. No. 1,671,467 registered January 7,1 992 for RALPH LAUREN for glass stemware, glass beverageware, glass bowls, dinnerware, namely, plates, cups, saucers and bowls.
Reg. No. 1,469,151 registered December 15, 1987 for RALPH LAUREN for men's, women's and children's dress and athletic shoes.
Reg. No. 1,624,989 registered November 27, 1990 for RALPH LAUREN for clothing, namely suits, slacks, trousers etc.
Reg. No. 2,046,657 registered March 18, 1997 for LAUREN RALPH LAUREN for wearing apparel, namely, topcoats, raincoats, jackets, suit jackets, suit coats, etc.
Reg. No. 2,077,090 registered July 8, 1997 for RALPH LAUREN for providing information in the field of fashion, lifestyle and other topics of general interest by means of a global computer network.
The Complainant has attached copies of the Certificates of Registration as Exhibit C.1-12.
Complainant submits that Ralph Lauren, whose name forms the basis of the RALPH LAUREN trademarks, is world famous and has won numerous fashion awards. His products are regularly featured or advertised in publications such as The New York Times, Vanity Fair and Vogue. In fiscal year 1999, Mr. Lauren's products had worldwide wholesale net sales of $4.2 billion and $51 million was spent on advertising Mr. Lauren's products.
Complainant advises that the fame of the RALPH LAUREN trademarks as well as Complainant's POLO and POLO-formative marks, have long been recognized by the courts. Complainant has provided a list of decisions and copies of cases involving Polo Fashions, Inc.
5. Parties� Contentions
Complainant
(a) The domain name is confusingly similar to the Complainant's federally registered RALPH LAUREN and RALPH LAUREN-formative trademarks and service marks.
Complainant submits that the addition of the descriptive term "glasses" to the domain name is not sufficient to distinguish it from Complainant's RALPH LAUREN mark.
Complainant submits that the likelihood is even more pronounced since the RALPH LAUREN trademarks are famous.
Complainant submits that the likelihood of confusion is strong because Respondent's domain name indicates that it sells goods identical to those sold by Complaint, namely sunglasses.
(b) Respondent has no rights or legitimate interest in the domain name .
Complainant submits that Respondent has no rights to the name or to the mark RALPH LAUREN. Respondent owns no trademark registrations which are comprised, in whole or in part, of the mark RALPH LAUREN, nor does he do business under a 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.
(c) Respondent registered and is using the domain name in bad faith.
Complainant submits that Respondent's bad faith is evidenced by: 1) the fact that Respondent owns no trademark registrations which include the mark RALPH LAUREN; 2) Respondent does not do business under the name RALPH LAUREN; 3) RALPH LAUREN is not the name of any individual associated with Respondent; 4) Due to the fame of the RALPH LAUREN trademark Respondent can hardly allege that he was unaware that the mark is owned by another entity.
Respondent
The Respondent did not file a Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of proving three elements:
(i) That the Complainant has rights in a trademark or service mark with which the Respondent�s Domain Name is identical or confusingly similar;
(ii) That the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
6.1 The first issue is whether the Complainant has rights in a trademark or service mark and whether the domain name in dispute is identical or confusingly similar to that mark.
Complainant is the owner of numerous registered trademarks in the United States of America in which the name RALPH LAUREN is a distinctive element. Complainant's marks are very well known with net sales in the year 1999 of 4.2 billion dollars. Complainant's Trademark Registration No. 1,053,873 for RALPH LAUREN and Design was registered in association with frames for prescription and non-prescription lenses and complete sunglasses on December 7, 1976. Complainant's Trademark Registration No. 1,057,453 for POLO BY RALPH LAUREN for frames for prescription and non-prescription lenses and complete sunglasses was registered on February 1, 1977. Complainant also owns Trademark Registration No. 2,175,394 for RALPH for frames for prescription and non-prescription lenses and complete sunglasses.
The domain name in dispute is . Respondent�s addition of the word "glasses" to the Complainant�s trademark does not negate confusing similarity with Complainant�s trademark.
The Panel finds that the domain name in dispute is confusingly similar or identical to Complainant�s trademark.
6.2 The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interest in the domain name in dispute.
Complainant submits that Respondent has no rights to the name or to the mark RALPH LAUREN. Respondent owns no trademark registrations which are comprised, in whole or in part, of the mark RALPH LAUREN, nor does he do business under a 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 Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.
6.3 The third matter which the Complainant must prove is that the domain name has been registered and is used in bad faith. The trademarks for or including RALPH LAUREN are registered in relation to glasses. Net sales of products in association with a trademark including RALPH LAUREN in 1999 exceeded 4.2 billion dollars. I conclude that the Respondent was aware of the trademarks for or including RALPH LAUREN at the date of registration of the domain name . The Respondent could not be contacted by e-mail and the hard copy of the Complaint delivered to the Respondent's address was returned to the Case Manager. The Respondent did not file a response. The Respondent does not operate an active website.
The issue is whether the passive holding of a domain name incorporating a very well known trademark may amount to "the domain name being used in bad faith". The Panel in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 held that passive holding of a confusing domain name amounts to the Respondent acting in bad faith in particular circumstances. The circumstances in this case are that the Respondent has adopted a domain name comprised of a prefix RALPH LAUREN confusing with a very well known trademark and a suffix "glasses" comprised of goods in association with which the well known mark is registered. The Respondent has taken steps to conceal itself by providing an e-mail address and a post office address at which the Respondent could not be contacted. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name. The Respondent has failed to activate a website or to provide any evidence that the Respondent is organizing or plans to organize a website. The above circumstances of the passive holding of the domain name in this particular case satisfy the requirement of paragraph 4.(c.).(iii) that the domain name in dispute "is being used in bad faith" by Respondent.
7. Decision
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: June12, 2002
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