WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PRL USA Holdings, Inc. v. Spiral Matrix Case No. D2009-0009 1. The Parties
The Complainant is PRL USA Holdings, Inc. of New York, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Spiral Matrix of Eldoret, Kenya. 2. The Domain Name and Registrar
The disputed domain name is registered with Domain Contender, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2009. On January 8, 2009, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the disputed domain name. On January 8, 2009, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 16, 2009. The Center verified that the Complaint together with the amendment to thereto 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 the Respondent of the Complaint, and the proceedings commenced on January 20, 2009. In accordance with the Rules, paragraphs 5(a), the due date for Response was February 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 10, 2009.
The Center appointed Mrs. Christiane Féral-Schuhl as the sole panelist in this matter on February 24, 2009. 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
The Complainant is a leader in the design, marketing and distribution of premium lifestyle products in the categories of apparel, accessories, home and fragrances.
The Complainant owns a number of United States (“US”) federal trademarks comprising the word RALPH LAUREN, such as, but not exclusively:
RALPH LAUREN
74043073
registered November 27, 1990
RALPH LAUREN
75357272
registered December 1, 1998
RALPH LAUREN (design)
77034993
registered November 2, 2006
RALPH LAUREN
2567308
registered February 12, 2002
RALPH LAUREN BLUE
2846306
registered June 10, 2003
RALPH LAUREN
76267488
registered June 6, 2001
RALPH LAUREN (character mark)
77041662
registered October 21, 2008
The Respondent is Spiral Matrix of Eldoret, Kenya.
The Respondent registered the disputed domain name on January 23, 2006. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- the disputed domain name is virtually identical to and confusingly similar with the RALPH LAUREN trademarks in which the Complainant has rights, and continues to have rights;
- the Respondent registered the domain name without the permission of the Complainant and it does not have a legitimate interest or right in the disputed domain name;
- the Respondent is exploiting the Complainant's RALPH LAUREN trademarks as a way to generate revenue from a pay-per-click website, listing advertisements of the Complainant's competitors selling the Complainant's goods at a discounted price through the website ;
- the Respondent has already registered and used domain names incorporating the Complainant's trademarks and a panel ordered the transfer of nineteen such domain names registered by the Respondent, to the Complainant in March 2006; (citing PRL Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
- the Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the holder of a number of trademarks comprising the word RALPH LAUREN, which is obviously identical with the first and relevant part of the disputed domain name . In comparison with the Complainant's trademarks, the disputed domain name bears the additional term “fabrics”.
It is a well-established principle that the addition of descriptive or non-distinctive terms to a complainant's trademark in a domain name does not dispel confusing similarity.
In Research in Motion Limited v. WG/Shahbaz Khan,WIPO Case No. D2008-0165, the panel, in ordering the transfer of the domain name to the complainant, held that the addition of “accessories” did nothing to diminish confusing similarity.
Similarly, in Research in Motion Limited v. Nicholas Stewart,WIPO Case No. D2008-0262 and in Research in Motion Limited v. Blackberry World,WIPO Case No. D2006-1099, the panels held that the domain names and were confusingly similar to the BLACKBERRY trademark.
The disputed domain name incorporates the RALPH LAUREN trademarks in their entirety with the addition of the generic word “fabrics” and a generic top-level domain “.org”.
The term “fabrics” further supports the likelihood that potential consumers may be misled or confused into believing that the disputed domain name points to a website operated by, or otherwise connected to, the Complainant. Furthermore, the addition of the generic top-level domain “.org” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant's famous RALPH LAUREN trademarks.
Accordingly, despite the addition of the term “fabrics” the Panel considers that the disputed domain name is confusingly similar in appearance, sound and in the idea suggested, with the RALPH LAUREN trademarks in which the Complainant has rights and continues to have rights. B. Rights or Legitimate Interests
It appears from the record that the Respondent has no connection or affiliation with the Complainant. The Respondent is not licensed, or otherwise authorized, directly or indirectly, to register or use, the RALPH LAUREN trademarks as part of a domain name or in any other manner.
The Respondent has offered no evidence that the use of the disputed domain name meets the elements for any of the non-exclusive examples provided in the Policy paragraph 4(c), or otherwise to demonstrate that the Respondent has rights or a legitimate interest in the disputed domain name.
There is no evidence that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
On the contrary the Panel considers that a bona fide use does not exist when the intended use is a deliberate infringement of another's rights. Indeed, the Respondent is not making and never has made any use of the domain name apart from associating it with a “pay-per-click” website.
Lastly, it has been said previously by a UDRP panel that: “the fact that the Respondent was requested to transfer domain names consisting of famous brands at several occasions (…) in other UDRP proceedings further suggests the absence of legitimate interests” (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) and paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
From the outset, it is worth mentioning that the registration of a domain name obviously connected with trademarks by someone without any connection to these trademarks suggests opportunistic bad faith (Veuve Cliquot Ponsardin, Maison fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). This assumption is confirmed by several facts:
The Panel considers that the disputed domain name, which contains the whole of the RALPH LAUREN trademarks, is likely to confuse potential consumers in believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.
Given the widespread use and goodwill of the Complainant's RALPH LAUREN trademarks, in the Panel's view, the Respondent had actual knowledge of the RALPH LAUREN trademarks when it registered the disputed domain name.
Clearly, the Respondent knew of the Complainant's RALPH LAUREN trademarks when it registered the disputed domain name since the Respondent has previously exploited the Complainant's RALPH LAUREN trademarks. Indeed, the Respondent has a history of exploiting the Complainant's RALPH LAUREN trademarks. See PRL USA Holdings, Inc. v. Spiral Matrix, supra, where the panel ordered the transfer of nineteen domain names incorporating the Complainant's RALPH LAUREN trademarks which were registered by the same Respondent (such as, but not exclusively: , ).
The Panel has noticed that the disputed domain name points to a pay-per-click website, so that a commercial benefit is derived from this use, and that this website displays sponsored links to businesses that offer goods and services that compete with, or rival, those products offered by the Complainant.
Accordingly, the Panel considers that:
- by registering the disputed domain name, the Respondent has disrupted the business of the Complainant, and;
- by using the disputed domain name, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its website.
Therefore, based upon the Complainant having shown the necessary elements of the Policy paragraph 4(b)(iii) and 4(b)(iv), the Panel finds that the disputed domain name was registered and used in bad faith pursuant to the Policy paragraph 4 (a)(iii). 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 name be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Dated: March 10, 2009
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