WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. Karen Vog
Case No. D2005-0418
1. The Parties
The Complainant is PRL USA Holdings, Inc., United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Karen Vog, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on April�20,�2005.
On April�20,�2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue.
On April�21,�2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May�2,�2005.
In accordance with the Rules, paragraph 5(a), the due date for Response was May�22,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May�24,�2005.
The Center appointed Clark W. Lackert as the sole panelist in this matter on June�6,�2005.
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, paragraph�7.
4. Factual Background
This Complaint is based upon the RALPH LAUREN family of trademarks which is owned by the Complainant, PRL USA Holdings, Inc. The Complainant alleges that it is a leader in the design, marketing, and distribution of premium lifestyle products in four categories: apparel, home furnishings, accessories, and fragrances. The Complainant owns numerous valid and subsisting United States trademark registrations and foreign trademark registrations for the mark RALPH LAUREN and various composite marks that include the mark RALPH LAUREN. Many of these registrations have become incontestable for a broad range of goods and services in the apparel, home furnishings, and lifestyle categories.
The Complainant allegedly has used the RALPH LAUREN mark in commerce continuously since 1967, expending hundreds of millions of dollars to advertise and market RALPH LAUREN products. These efforts have resulted in sales of billions of dollars worth of goods bearing RALPH LAUREN trademarks, and allegedly have made the mark famous.
The domain names at issue were registered by the Respondent on June�16,�2004. According to the Complainant, these domains exploit the Complainant’s trademarks to direct consumers to sites that sell genuine and counterfeit Ralph Lauren branded merchandise. The Respondent’s domain names also display the Complainant’s RALPH LAUREN trademark without the Complainant’s consent and provides an unauthorized link to the Complainant’s website.
The Complainant’s counsel sent the Respondent a demand letter on July�9,�2004. The Respondent failed to respond to this letter. The Complainant’s counsel sent the Respondent a second demand letter on August�5,�2004. The Respondent failed to respond to this letter as well.
5. Parties’ Contentions
A. Complainant
The Respondent’s domain names are confusingly similar to the Complainant’s famous RALPH LAUREN trademarks. These domain names incorporate the Complainant’s RALPH LAUREN mark and descriptive terms that act to increase the likelihood of confusion by calling attention to the Complainant’s well-known core businesses, retail clothing and bedding sales.
The Respondent has no legitimate interests in the domain names. The Respondent registered the domain names with the full knowledge that they incorporated the RALPH LAUREN trademarks without the Complainant’s authorization. The Complainant had established its rights to the RALPH LAUREN trademarks before the Respondent registered the domain names and the Respondent’s business name is not similar to the Complainant’s trademarks. The Respondent registered the domain names in an attempt to profit from the fame of the Complainant’s trademarks and the goodwill that they embody.
The Respondent registered and is using the domain names in bad faith. By registering the domain names which incorporate the Complainant’s famous RALPH LAUREN mark, the Respondent has intentionally created a likelihood of confusion in an effort to attract internet users. The Respondent has also attempted to create the illusion of an affiliation with the Complainant by proclaiming that its websites are online Ralph Lauren directories and that the Respondent sells Ralph Lauren products worldwide. This illusion is furthered by the fact that the domain names display the highly distinctive RALPH LAUREN trademark and a brief history of Ralph Lauren and his company. Collectively, these factors work to suggest that the domain names are either sponsored, affiliated, or endorsed by the Complainant, while in reality, they are simply parasitic attempts to profit off the fame of the RALPH LAUREN trademarks.
The Respondent’s use of the Complainant’s famous RALPH LAUREN trademarks in its domain names is also indicative of bad faith. The RALPH LAUREN family of trademarks are famous and therefore, the Respondent was aware of their existence when it registered the domain names. Nevertheless, the Respondent registered the domain names, which incorporate the RALPH LAUREN mark in its entirety, in an effort to earn an unlawful profit by misdirecting internet traffic to the websites of the Complainant’s competitors. This use of the Complainant’s trademarks supports a finding of bad faith.
The Respondent’s failure to respond to the Complainant’s demand letters is also indicative of bad faith. As held in Telstar Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the use of a domain name in bad faith may be evidenced by both the Respondent’s actions and its inactions. Therefore, the failure of a Respondent to act may, in certain circumstances, constitute bad faith. The Complainant sent the Respondent two cease and desist letters dated July�9,�2004, and August�5,�2004. The Respondent failed to directly respond to either of these letters. The Respondent’s failure to directly respond to these letters constitutes bad faith.
The Respondent’s efforts to cure its wrongful behavior by adding a disclaimer to its websites does not mitigate the fact that the Respondent registered and used the domain names in bad faith. After the Registrant received the Complainant’s first cease and desist letter, it added a disclaimer to each domain name that stated that the sites were not affiliated with Ralph Lauren. These disclaimers do not serve to “cure” the Registrant’s wrongful behavior and do not undermine the Complainant’s cause of action. Under the Policy, the Complainant only needs to prove that the Respondent acted in bad faith when it registered the domain names to support its claim.
B. Respondent
The Respondent is in default and has not filed a reply to the Complainant’s contentions.
6. Discussion and Findings
To be successful, the Complainant must prove each of the three elements set forth in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy. Specifically, the Complainant must prove that (i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain names; and (iii) the domain names were registered and are being used in bad faith. The Panel will now look at each of these three elements individually to determine if the Complainant has met its burden of proof.
A. Identical or Confusingly Similar
The Panel has reviewed the evidence submitted by the Complainant concerning the ownership of the RALPH LAUREN trademarks and it is satisfied that the Complainant has proven that it possesses trademark rights in these terms. Furthermore, the Panel finds that the domain names and are confusingly similar to the RALPH LAUREN trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights or legitimate interests to the domain names in several ways. First, the Respondent may provide evidence that it used, or made demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services prior to receiving notice of this dispute. Second, the Respondent may provide evidence that it is commonly known by the domain names despite the fact that it has not acquired trademark rights for these names. And third, the Respondent may provide evidence that it is using the domain names in a legitimate, noncommercial fashion without intent for commercial gain or desire to misleadingly divert consumers or tarnish the Complainant’s trademarks.
In this case, the Respondent has failed to respond to the Complainant’s contentions. As a result, there is no evidence that the Respondent used the domain names to make a bona fide offering of goods or that it was commonly known by the domain names. There is also no evidence that the Respondent was using the domain names in a legitimate, noncommercial fashion. Consequently, the Panel finds that the Respondent has not shown any legitimate rights in the domain names.
C. Registered and Used in Bad Faith
Under Paragraph 4(b)(iv) of the Policy, the Panel may find that the Respondent registered and used the domain names in bad faith if the evidence shows that the Respondent intentionally attempted to attract consumers to the domain names for commercial gain by creating a likelihood of confusion with the Complainant’s mark and the illusion that its websites were sponsored, affiliated, or endorsed by the Complainant.
The record shows that the Respondent registered domain names that incorporated the Complainant’s RALPH LAUREN trademark in an attempt to attract Internet traffic to its websites. These websites, which proclaimed themselves online Ralph Lauren directories and displayed the Complainant’s trademark, provided links to other websites that sold both authentic and counterfeit Ralph Lauren products. The record also shows that the Respondent received a payment each time a consumer visited one of these other websites and that the Respondent registered the domain names in attempt to profit off the goodwill of the Complainant. Therefore, the Panel finds that the Respondent registered and used the domain names in bad faith.
7. Decision
The Panel decides that (1) the domain names and are identical or confusingly similar to the Complainant’s RALPH LAUREN trademarks; (2) that the Respondent has no rights or legitimate interests in these domain names; and (3) that the domain names were registered and used in bad faith.
The Panel hereby orders that the registration of the domain names and be transferred to the Complainant.
Clark W. Lackert
Sole Panelist
Date: July�5,�2005
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