WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. Spiral Matrix
Case No. D2006-0189
1. The Parties
The Complainant is PRL USA Holdings, Inc., New York, New York, United States of America, represented by Greenberg Traurig, LLP, of United States of America.
The Respondent is Spiral Matrix, Eldoret, of Kenya.
2. The Domain Names and Registrar
The disputed domain names are:
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All are registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.
3. Procedural History
The Complaint, dated February 10, 2006, was received by the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2006. On February 15, 2006, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On the same day, Intercosmos Media Group, Inc. d/b/a directNIC.com 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 February 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March�8,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2006.
The Center appointed Philippe Gilli�ron as the sole panelist in this matter on March�13,�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
Complainant is a leader in the design, marketing and distribution of premium lifestyle products in the categories of, inter alia, apparel, accessories, home and fragrances.
Since 1967, complainant has continuously and extensively used the POLO/RALPH LAUREN trademarks to conduct its activities, for an ever increasing range of goods and services. Through the years, it has registered on a wide variety of goods numerous trademarks containing, sole or in combination with other elements, the terms POLO and/or RALPH LAUREN, such as, but not exclusively:
- USPTO Registration n� 1,363,459 of October 1, 1985, for POLO for diverse articles of clothing and apparel;
- USPTO Registration n� 1,446,173 of July 7, 1987, for POLO for eyewear;
- USPTO Registration n� 1,468,420 of December 8, 1987, for POLO for athletic shoes;
- USPTO Registration n� 1,671,466 of January 2, 1992, for POLO for home furnishings;
- USPTO Registration n� 1,798,814 of October 12, 1993, for POLO for sporting goods;
- USPTO Registration n� 207’70’82 of July 8, 1997, for POLO RALPH LAUREN for bags;
- USPTO Registration n� 2,718,880 of May 2 27, 2003, for POLO SPORT RALPH LAUREN for underwear;
- USPTO Registration n� 2’718’874 of May 27, 2003, for POLO JEANS CO. RALPH LAUREN for wearing apparel.
Complainant’s POLO/RALPH LAUREN trademarks have generated extensive fame and goodwill over years.
Respondent registered the domain names:
on May 21, 2005;
on June 10, 2005;
on June 11, 2005;
on June 25, 2005;
on July 9, 2005;
on July 15, 2005.
Each of these websites are used by the Respondent as portal gates to direct consumers to other sites, some of them offering Complainant’s as well as other famous brands’ products such as, but not exclusively, Armani, Chanel, Gucci, Calvin Klein or Prada.
On August 31, 2005, Complainant sent a cease and desist letter to the Respondent and requested him to transfer to it several domain names, including , , and at issue. The letter was returned because of an incorrect address, and the Respondent did not respond to Complainant’s letter sent by e-mail. An attempt to send the letter via DHL Worldwide express on September 21, 2005, did not prove more successful.
On October 6, 2005, Complainant sent a second cease and desist letter via e-mail and Federal Express, reiterating its request and extending it to . No Response was made by the Respondent.
The Respondent registered on October�13, 2005.
The Respondent did not reply to a third cease and desist letter that was sent by the Complainant on October 27, 2005, to include in the list of domain names to be transferred to it.
The Respondent went on registering the following domain names:
, on November 3, 2005;
and , on November 4, 2005;
, , , , , , on November 8, 2005;
, on November 11, 2005;
, on December 5, 2005;
on December 7, 2005.
The Respondent has been a party to different UDRP proceedings in 2005:
- Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145;
- Finaxa v. Spiral Matrix, WIPO Case No. D2005-1044;
- Dr Ing. h.c. F. Porsche AG v. Spiral Matrix et al., WIPO Case No. D2005-0890;
- Societe des Hotel Meridiens v. Spiral Matrix et al., WIPO Case No. D2005-1196.
All cases led to the transfer of the domain names in favor of complainants.
5. Parties’ Contentions
A. Complainant
(i) Identical or Confusingly Similar
The Complainant contends that the domain names are confusingly similar to its trademarks, as the mere addition of generic terms or misspelling does not exclude the likelihood of confusion.
(ii) Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names. First, the Respondent registered the domain names only after Complainant had established rights in its POLO/RALPH LAUREN trademarks. Second, it has no business name that would be similar to the Complainant, and has never been a licensee or authorized in any way to use Complainant’s trademarks. Finally, the Respondent does not offer any legitimate business under the domain names: it specifically chose them as a way of linking to sites that sell both real and counterfeited goods under the Complainant’s POLO/RALPH LAUREN trademarks.
(iii) Registered and Used in Bad Faith
Given the widespread use and fame of Complainant’s POLO/RALPH LAUREN trademarks, Respondent had actual knowledge of Complainant’s trademarks when it registered the domain names; more than that, it went on registering domain names even after being advised of Complainant’s objections. In addition to that, Respondent registered and used the domain names in bad faith for several reasons: it intentionally used the domain names to attract Internet users to its websites for commercial gain (every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections), by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its web sites. Furthermore, Respondent registered and used the domain names to disrupt Complainant’s business.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph�15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs�5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph�14(b) of the Rules.
Paragraph�4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to Policy, paragraph�4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Though not identical, there is no doubt that the domain names at issue are confusingly similar with the Complainant’s trademarks.
As pointed out by the Complainant, the domain names at dispute can be divided in two categories:
First, the ones composed of Complainant’s trademarks plus one generic or descriptive term, i.e.: , , , , , , , , , , , , , and . As repeatedly stated, the mere addition of a generic or descriptive term does not exclude the likelihood of confusion (See among others: Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; W.L. Gore & Associates Inc. v. Bernie Bartholome, WIPO Case No. D2001-1347 and Str�lfors AB v. P D S AB, WIPO Case No. D2000-0112).
Second, , , and all fall into the category of typosquatting, i.e., the use of misspelling famous trademarks so as to direct users who would make a typographical error to another website than the one of the right holder (Reuters Ltd. v. Global Net 2000, Inc. WIPO Case No. D2000-0441). As stated in Reuters, a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.
Whatever the category, the gTLD is a technical necessary element of a domain name, which should not be considered as relevant to appraise the likelihood of confusion between a trademark and a domain name (Tengizchevroil v. Hardinvestments Limited, WIPO Case No. D2002-0061; Joe David Graedon v. Modern Ltd. – Cayman Web Development, WIPO Case No. D2003-0640; Pomatello S.p.a. v. Tonetti, WIPO Case No. D2000-0493).
Accordingly, the Panel finds that Policy, paragraph 4(a) (i) has been satisfied.
B. Rights or Legitimate Interests
According to Policy, paragraph�4(b) (ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.
In Do The Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624, the Panel stated: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.”
In this case, the Respondent does not bring any evidence that would demonstrate any legitimate interest or right in the domain name as he did not proceed. More specifically, the Respondent does not demonstrate that:
(i) before any notice to him of the dispute, it used or made preparations to use the domain names or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it is commonly known by the domain names, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As established by the Complainant, his trademarks have been held to be famous in numerous occasions by US Courts (Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 1998 U.S. Dist. LEXIS 11735, 7-8 (D. Tex., 1998); Polo Ralph Lauren L.P. v. Schuman, 1998 U.S. Dist. LEXIS 5907 (D. Tex., 1998); Gucci America, Inc. v. Action Activewear, Inc., 759 F. Supp. 1060, 1061 (S.D.N.Y. 1991); Polo Fashions, Inc. v. Fernandez, 655 F. Supp. 664, 668 (D.P.R. 1987); Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 147 (4th Cir. 1987); Polo Fashions, Inc. v. Diebolt, Inc., 634 F. Supp. 786, 788 (D. Kan. 1986); Polo Fashions, Inc. v. Rabanne, 661 F. Supp. 89, 94 (S.D. Fla. 1986); Polo Fashions, Inc. v. Famous Brands, Inc., 1986 U.S. Dist. LEXIS 19412 (D. Kan., 1986); Polo Fashions, Inc. v. The Gordon Group, et al., 627 F. Supp. 878, 887 (M.D.N.C. 1985); Polo Fashions, Inc. v. Clothes Encounters, 1985 U.S. Dist. LEXIS 17838, 227 U.S.P.Q. (BNA) 327, 1985 WL 96, (N.D. Ill. 1985); Polo Fashions, Inc. v. Magic Trimmings, Inc., 603 F. Supp. 13, 15 (S.D. Fla. 1984); Polo Fashions, Inc. v. Branded Apparel Merchandising, Inc., 592 F. Supp. 648, 651 (D. Mass. 1984); Polo Fashions, Inc. v. Extra Special Products, Inc., 451 F. Supp. 555, 559-60 (S.D.N.Y. 1978). There is no doubt that the same is true at the international level, and that the Complainant’s trademarks are “well-known” within the meaning of Art. 16.2 and 3 of the TRIPS Agreement.
Consequently, the Respondent most likely had knowledge of the Complainant’s trademarks when it registered the domain names. His choice for such domain names cannot be explained but as a misappropriation of the Complainant’s trademarks. As stated in National Association for Stock Car Auto Racing, Inc. v. Don Deaube , R & D Enterprises, WIPO Case No. D2000-0847, “use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services […]. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”.
The fact that the Respondent was requested to transfer domain names consisting of famous brands at several occasions last year in other UDRP proceedings further suggests the absence of legitimate interests (see in particular Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145; Dr Ing. h.c. F. Porsche AG v. Spiral Matrix et al., WIPO Case No. D2005-0890; Societe des Hotel Meridiens v. Spiral Matrix et al., WIPO Case No. D2005-1196).
For this reason, the Panel admits the Complainant’s contentions and considers Policy, paragraph�4(a)(ii) to be fulfilled.
C. Registered and Used in Bad Faith
For a Complain to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph�4(a)(iii)).
From the outset, it is worth mentioning that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith (Veuve Cliquot Ponsardin, Maison fond�e en 1772 v. The Polygenix Group, WIPO Case No. D2000-0163). This assumption is confirmed by several facts:
First, paragraph�4(b)(iv) of the Policy provides for a finding of bad faith where “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Considering that the Respondent most likely knew of the Complainant’s trademarks and reputation when it registered the domain names, and having regard to all the evidence submitted to the Panel, there can be no plausible explanation for Respondent’s activities in establishing the domain names other than to attract Internet users to its locations by relying on their confusion with the famous trademarks of the Complainant, and to take advantage of internet users typing an incorrect address.
Second, the Respondent went on registering domain names that were infringing Complainant’s rights, in spite of the numerous cease and desist letters that had been sent by the Complainant, thus deliberately infringing these rights.
Thirdly, the Respondent’s domain name points to websites which are a mere collection of links to other websites. As the Complainant correctly points out, these websites are a vehicle for generating revenues, since every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections (Deutsche Telekom AG v. WWW Enterprises, Inc., WIPO Case No. D2004-1078). By using these domain names, the Respondent therefore has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's trademarks. Policy, paragraph 4 (b)(iv) is therefore satisfied.
Finally, from the evidence submitted to the Panel, it is evident that, in having registered numerous domain names containing Complainant’s trademarks after receiving the cease and desist letters which had been sent to him by the Complainant, the Respondent has engaged in a pattern of conduct to prevent the Complainant from reflecting its marks in corresponding domain names. Policy, paragraph 4 (b)(ii) is also satisfied.
The Panel finds that Policy, paragraph�4(a)(iii), has been satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names:
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be transferred to the Complainant.
Philippe Gilli�ron
Sole Panelist
Dated: March 22, 2006
Full & Egal Universal Law Academy