WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. J. Schwarz
Case No. D2006-0147
1. The Parties
1.1 The Complainant is PRL USA Holdings, Inc. , New York City, United States of America, represented by Greenberg Traurig, LLP, United States of America.
1.2 The Respondent is J. Schwarz, New York, New York, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name is registered with NameS (a VeriSign Co.).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February�2,�2006. On February�3,�2006, the Center transmitted by email to NameS (a VeriSign Co.) a request for registrar verification in connection with the domain name at issue. On February�9,�2006, NameS (a VeriSign Co.) 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”).
3.2 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 February�13,�2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 5, 2006. The Respondent submitted a response by email on February�20,�2006, followed by a hard copy on February�28,�2006.
3.3 Complainant submitted an unsolicited statement on February�28,�2006.
3.4 The Center appointed Jay Simon as the sole Panelist in this matter on March�10,�2006. 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
4.1 Complainant is known internationally for its design and marketing of so called ‘life style’ products, e.g., apparel, home fashions, accessories, and fragrances.
4.2 Complainant’s trademarks have been recognized in the United States courts as being famous and distinctive, e.g., Polo Fashions, Inc. v. Craftex, Inc., 816 F2d 145 (4th Cir., 1987).
4.3 Complainant owns a number of trademarks relevant to these proceedings that are registered in the United States Patent and Trademark Office. Among these marks are:
Mark
Int’l Class
Reg. No.
Reg. Date
RALPH LAUREN
042
2077090
July 8, 1997
RALPH LAUREN
016
2042967
March 11, 1997
RALPH LAUREN
025
1914205
August 22, 1995
RALPH LAUREN
018
1976324
May 28, 1996
RALPH LAUREN
025
2207011
December 1, 1998
RALPH LAUREN
003
1222278
October 12, 1983
RALPH
003
2562975
April 23, 2002
RALPH LAUREN
GLAMOROUS
003
2568195
May 7, 2002
4.4 These marks cover products such as women’s intimate wear, bags, infants and children’s clothing, home furnishing catalogs and magazines, fashion, colognes and perfumes.
4.5 Complainant filed a trademark application in the USPTO for the mark RALPH LAUREN BEAUTY, see No. 78/646,614, for cosmetics. As of the date of commencement of these proceedings, the application remains pending in the USPTO.
4.6 Complainant owns several domain names including , , and .
4.7 Complainant has advertised its trademark products extensively and has realized rather significant sales of these products.
4.8 Respondent registered the disputed domain name on October�25,�2004.
4.9 Complainant’s counsel sent a letter to Respondent on February�10,�2005, advising Respondent of Complainant’s rights in its trademarks. At that time the disputed domain name resolved to a website containing links to sites selling Complainant’s goods as well as goods of Complainant’s competitors.
4.10 Respondent redesigned the website as a fan site offering links to A and advertisements through YAHOO!
4.11 Complainant’s counsel sent a cease and desist letter to Respondent on April�11,�2005, regarding the redesigned website. Respondent did not respond to the letter of February 10, 2005, or to the letter of April�11,�2005.
5. The Parties’ Contentions
A. Complainant
5.1 Complainant contends that the disputed domain name is identical to or confusingly similar to Complainant’s marks. Complainant contends that the word ‘beauty’ is no more than a descriptive term that does not change the essential nature of the mark.
5.2 Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name and that there is no relationship between Respondent and Complainant that would give use to any license, permission, or authorization for Respondent to use Complainant’s trademarks.
5.3 Complainant further contends that Respondent is not commonly known by the disputed domain name and that Respondent is not making any legitimate, non-commercial or fair use of the disputed domain name.
5.4 Complainant further contends that Respondent presumably gets some benefit from any type of click through links to Amazon or YAHOO! regardless of whether the website associated with the disputed domain name appears to be a fan site.
5.5 Complainant contends that Respondent registered and is using the disputed domain name in bad faith, particularly in regard to Paragraph 4(b)(iv) of the Policy.
5.6 Complainant further contends that bad faith registration and use is shown by Respondent’s registration of the disputed domain name and that Respondent could not have made any use of the disputed domain name without creating a false impression of association with Complainant.
5.7 Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
5.8 Respondent contends that while a family of RALPH LAUREN trademarks may exist, there is no mention of a RALPH LAUREN trademark and that Complainant’s marks have been granted only for RALPH LAUREN in combination with other words.
5.9 Respondent contends that the trademark application for RALPH LAUREN BEAUTY has not been granted, and there is no trademark owned by Complainant for this term. Respondent further contends that its registration of the disputed domain name pre-dates Complainant’s trademark application by more than six months.
5.10 Respondent contends that the website for the disputed domain name is non-commercial where members may comment on Ralph Lauren products and keep up to date about his creations. Respondent further contends that this use of the website amounts to fair use.
5.11 Respondent denies that the website was a “click thru” site that offered links to goods of Complainant’s competitors and that the website was always a fan site.
5.12 Respondent contends that the only commercial links associated with the website are to a referencing biographies of Ralph Lauren, that this link is for informational purposes only, and Respondent receives no payment from a.
5.13 Respondent contends that Complainant’s desired remedy should be denied by the Panel.
6. Discussion and Findings
6.1 The first issue that needs to be decided is the status of Complainant’s unsolicited (by this Panel) supplementary filing. In general, the UDRP makes no provisions for unsolicited filings by either party. While there are occasions when a Panel may request additional filings, these requests are usually for additional information or a clearer understanding of the parties’ position. See Paragraph 12 of the Rules. There are also occasions when an unsolicited filing can be accepted by the Panel, and the Panel will then permit the other party to respond. Needless to say, the UDRP was designed to effectively and efficiently resolve domain name disputes. Additional filings, particularly unsolicited filings undermine the efficiency of the proceedings.
6.2 With respect to unsolicited filings, this Panel is of the view expressed in Gordon Sumner, p/k/a Sting v. Michael Urvane, WIPO Case No. D2000-0596, that unsolicited submissions will be considered only in exceptional circumstances, and only when the party filing the unsolicited submission explains the exceptional circumstances and why the material could not have been submitted with the Complaint (or Response).
6.3 Complainant has made no showing of exceptional circumstances and has not explained why the materials in its unsolicited submission could not have been submitted earlier. Complainant argues that Respondent has included new facts and arguments in the Response. Of course, these arguments and facts are new – it is Respondent’s response. Further, there is absolutely nothing in Complainant’s unsolicited submission that could not have been submitted in its Complainant.
6.4 Consequently, Complainant’s unsolicited submission will not be considered by this Panel, and there is no need for the Panel to request a further submission from Respondent. Thus, this Panel believes that the Complaint and Response are quite adequate for the Panel to decide this dispute.
6.5 The Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
6.6 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element in Paragraph 4(a) of the Policy.
6.7 Complainant satisfies its burden of proof by presenting a prima facie case. When Complainant has made a prima facie case, it is then incumbent upon Respondent to come forth with evidence, often uniquely possessed by Respondent, to rebut Complainant’s case. See for example, Croatio Airline d.d v. Modem Empire Internet Ltd., WIPO Case No. D2003-0455.
A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)
6.8 Complainant has established rights in the mark RALPH LAUREN, contrary to Respondent’s contention. Consequently, the disputed domain name differs from Complainant’s marks merely by the addition of the word “beauty”. The word “beauty” is a common term and does not suffice to distinguish the famous trademark RALPH LAUREN from the disputed domain name. In the opinion of this Panel, it is doubtful that any additional term could be used to distinguish adequately the disputed domain name from the marks in which Complainant has rights. See, for example, PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 that the mere addition of a common term to a distinctive, famous mark does not change the overall impression of the disputed domain name as being connected to the Complainant.
6.9 Complainant has argued that it has a U.S. trademark application for the mark RALPH LAUREN BEAUTY. Trademark applications do not confer rights. Further, Complainant has offered no evidence that the mark for which the application has been made has achieved secondary meaning for which common law rights may be ascribed. Nevertheless, in view of Complainant’s established, registered, and famous marks, this Panel finds the disputed domain name confusingly similar to Complainant’s marks.
B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)
6.10 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain. Respondent has, however, chosen to stake its claim to legitimacy on the fact that the website is a fan site.
6.11 The WIPO Overview of WIPO Panel Views on Selected UDRP Questions addresses the issue of fan sites in Paragraph 2.5. If any legitimacy can be found in Respondent’s position, and the distinctiveness of Complainant’s marks makes that position difficult, at best, Respondent’s website must at a minimum be active, clearly non-commercial, and distinctive from any official site, i.e., contain a clear disclaimer that Respondent’s website is not an official site.
6.12 From the evidence submitted by Complainant, the website to which the disputed domain name resolved was clearly commercial, e.g., links to commercial sites, and had no disclaimer of any kind. See Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042. Since Respondent has not provided any other evidence that might show its rights in the disputed domain, and no relationship exists between Respondent and Complainant that might give rise to such rights, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
6.13 The fact that Respondent modified the website, presumably in response to Complainant’s counsel’s first letter, is not of significance in this case because Respondent has submitted no evidence of what the website contained after the modification. Thus, there is no evidence that a disclaimer exists or that commercial links are not present. (Respondent does admit that a link to a, a commercial, on-line book seller is present on the site.)
C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)
6.14 Paragraph 4(b) of the Policy indicates several, non-exclusive methods for showing bad faith registration and use of a disputed domain name.
6.15 There is no question that Complainant’s marks are famous, distinctive, and internationally known. There can be no question that Respondent was aware of Complainant’s marks when Respondent registered the disputed domain name. Respondent’s position admits as much.
6.16 Many WIPO UDRP cases have found that when a famous or notorious mark is incorporated in a disputed domain name, it is virtually inconceivable that respondent could be making any use of the name without creating an impression – in this case a false impression – of association with a complainant. See, for example, Chanel, Inc. v. Designer Exposure, WIPO Case No. D2000-1832; Sony Kabushiki Kaisha v. Inja Kil, WIPO Case No. D2000-1409. Thus, while there is no hard evidence that Respondent profits from the use of the disputed domain name, Respondent’s actions, as a whole, appear to this Panel, to amount to bad faith registration and use of the disputed domain name.
7. Decision
7.1 For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name be transferred to Complainant.
Jay Simon
Sole Panelist
Dated: March 31, 2006
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