WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PRL USA Holdings, Inc. v. Jose A Copin Inc. Case No. D2008-1718 1. The Parties
Complainant is PRL USA Holdings, Inc., of New York, United States of America, represented by Greenberg Traurig, LLP of United States of America.
Respondent is Jose A Copin Inc., of Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name at issue. On November 10, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 4, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 5, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on December 10, 2008. 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 designs, markets, and distributes many lifestyle products such as apparel, accessories, and fragrances under the RALPH LAUREN mark. Complainant has used the RALPH LAUREN marks in commerce continuously since 1967. Complainant owns numerous valid and subsisting United States of America Trademark registrations (in addition to many other trademark registrations) for a family of RALPH LAUREN marks.
Respondent registered the domain name on March 20, 2006. 5. Parties' Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to its RALPH LAUREN mark because the entire well-known RALPH LAUREN mark is incorporated into the disputed domain name. The disputed domain name is composed of the RALPH LAUREN mark plus the generic term “watches.” Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and failed to respond to Complainant's cease and desist letters. Complainant further asserts that the disputed domain name was registered and is being used in bad faith to attract unsuspecting Internet users to Respondent's pay-per-click parking website. B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.,WIPO Case No. D2003-0185. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant's RALPH LAUREN mark. The disputed domain name incorporates Complainant's RALPH LAUREN mark in its entirety and then adds the generic word “watches.” Generally, domain names composed of protected marks plus merely descriptive or generic additions are confusingly similar to the protected mark for the purposes of establishing 4(a)(i) under the Policy. Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; Yahoo! Inc. and Geo Cities v. Cupcakes, Cupcakes city, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, WIPO Case No. D2000-0777. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by respondent, shall be evidence of respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to respondent, respondent's use of, or demonstrable preparation to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods and services; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant's RALPH LAUREN marks are well-known and widely recognized. PRL USA Holdings, Inc. v. Philip Chang, WIPO Case No. D2006-0093; PRL USA Holdings, Inc. v. J. Schwarz, WIPO Case No. D2006-0147; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; PRL USA Holdings, Inc. v. Freddy Militana, WIPO Case No. D2005-1026. There appears to exist no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name, which incorporates Complainant's RALPH LAUREN trademarks. Respondent does not appear to be commonly known by the disputed domain name and does not appear to be making a legitimate noncommercial or fair use of the disputed domain name.
For the above reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registrations to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain names; or
(ii) respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's websites or other on-line locations, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's websites or locations or of a product.
Respondent registered the disputed domain name four decades after Complainant established trademark rights in the RALPH LAUREN mark. Respondent's evident goal is to generate revenue from the use of the well-known RALPH LAUREN mark. Asian World of Martial Arts Inc. v. Texas International Property. Associates, WIPO Case No. D2007-1415 (finding bad faith where the disputed domain name was registered a decade after Complainant's trademarks were registered and used for its trademark value).
It is unlikely Respondent was unaware of the RALPH LAUREN mark when it registered the disputed domain name. Many of the links on the website refer to RALPH LAUREN branded products. Given Respondent's apparent awareness of the well-known RALPH LAUREN mark, the registration and use of the disputed domain name is in bad faith. Asian World of Martial Arts Inc. v. Texas Intl Prop. Associates, WIPO Case No. D2007-1415 (Dec. 10, 2007); PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189 (Mar. 22, 2006); Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (Mar. 10, 2000); Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (Feb. 22, 2001).
Respondent's registration and use of the disputed domain name which is confusingly similar to Complainant's RALPH LAUREN mark, for the purpose of generating revenue establishes bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. 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 disputed domain name be transferred to the Complainant.
William F. Hamilton
Sole Panelist
Dated: December 23, 2008
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