WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PRL USA Holdings, Inc. v. Louis Zweifach Case No. D2009-0118 1. The Parties
Complainant is PRL USA Holdings, Inc. of New York, United States of America, represented by Greenberg Traurig, LLP of the United States.
Respondent is Louis Zweifach of Florida, United States. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2009. On January 30, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On January 30, 2009, GoD, Inc. 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 February 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 26, 2009.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on March 11, 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
Complainant owns numerous United States registrations for the mark RALPH LAUREN including, for example:
United States Reg. No. 1624989 first registered November 27, 1990 in U.S. class 39, with subsequent renewals;
United States Reg. No. 220711 registered December 1, 1998 in U.S. classes 22 and 39;
United States Reg. No. 2567308 registered May 7, 2002 in U.S. classes 13, 21, 23, 31, and 34.
The disputed domain names , , , and were registered on November 5, 2008. The other disputed domain names in this proceeding, , , , and , were registered between January 2 and January 6, 2009.
The pages to which the disputed domain names route are all similar; they consist of parking pages displaying a search window and links to a variety of third-party websites, including some which offer for sale products in competition with those of Complainant. 5. Parties' Contentions A. Complainant
Complainant avers that it is a leader in the design, marketing and distribution of premium lifestyle products including apparel, accessories, home and fragrances. As a result of Complainant and its predecessors' continuous and extensive use of the RALPH LAUREN trademarks, Complainant contends, its revenues in 2008 were $3.65 billion in the United States and $4.88 billion globally. Complainant adds that its RALPH LAUREN trademarks are inherently distinctive, have become famous and created substantial goodwill.
Complainant contends that Respondent is using the disputed domain names to exploit Complainant's trademarks to generate revenue from pay-per-click advertisements for Complainant's competitors, including those discounting Complainant's own products, resulting in a diversion of traffic of Internet users for commercial gain.
Complainant's legal contentions are summarized below. 1. Identical or Confusingly Similar
Complainant contends that the disputed domain names are confusingly similar to Complainant's RALPH LAUREN marks. Complainant notes that the addition of the generic top-level domain “.com” is irrelevant in determining whether the disputed domain names are confusingly similar to Complainant's marks.
Complainant contends that the disputed domain names are confusingly similar to Complainant's marks and fully incorporate Complainant's famous trademarks. Complainant contends that the addition of descriptive words to a trademark to form a domain name is not sufficient to avoid confusion, citing the panel decisions in U-Haul International, Inc. v. Affordable Web Productions,WIPO Case No. D2003-0511, Time Warner Entertainment Company, L.P. v. HarperStephens,WIPO Case No. D2000-1254, and Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini,WIPO Case No. D2000-0777.
Since the descriptive terms added by Respondent to the trademark correspond in some cases to Complainant's products sold under the trademarks, Complainant adds, the combination with Complainant's marks simply adds to the confusion, citing Viacom International Inc. v. Erwin Tan, WIPO Case No. D2001-1440, Advance Magazine Publishers Inc. v. Lisa Whaley,WIPO Case No. D2001-0248, and Nokia Corporation v. N a.k.a. IBCC,WIPO Case No. D2000-0102. 2. Rights or Legitimate Interests
Complainant alleges that Respondent cannot demonstrate any legitimate interest in the disputed domain names, which were registered only after Complainant had established rights in its famous trademarks, citing Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, Medisite S.A.R.L. v. Intellisolve Limited,WIPO Case No. D2000-0179, and V&S Vin & Sprit Aktiebolag v. Tyler Kownacki, NAF Claim No. 95079. Complainant continues by citing ample authority which it contends establishes that, where Complainant's marks are so well known and widely recognized, there can be no legitimate use of them by Respondent.1
Complainant alleges that Respondent is generating revenue by trading upon the valuable goodwill and reputation generated by Complainant's trademarks, by misleading consumers into believing Respondent's website is affiliated with or endorsed by Complainant and by misdirecting Internet traffic from Complainant's legitimate website.
Complainant also cites authority to the effect that pay-per-click parking page websites built around a trademark do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii).2 Complainant avers that Respondent lacks any license, permission, or authorization to use the disputed domain names. Complainant also contends that Respondent is not commonly known by any of the components that form the disputed domain names and is not making legitimate, noncommercial or fair use of the domain names. 3. Registered and Used in Bad Faith
Complainant contends that Respondent registered and has used the disputed domain names in bad faith, and that Respondent's sole interest is to unlawfully profit from the use of Complainant's trademarks by confusing Internet users. In support of this conclusion, Complainant cites a large number of cases, contending that UDRP panels have concluded that the use of famous trademarks to divert Internet users to pay-per-click parking pages, without authorization to use the trademarks, constitutes bad faith. In particular, Complainant contends, the linking of the disputed domain names to sites offering goods in competition with those associated with the trademarks has been found to comprise bad faith registration and use, citing mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., supra. 4. Communications Between the Parties
Complainant describes the following communications with Respondent, attaching to the Complaint copies of the relevant letters and emails:
- On December 30, 2008, Complainant sent a cease and desist letter to Respondent at his address (listed anonymously by Domains By Proxy, Inc.) for , , , and .
- Via first class mail with return receipt and e-mail to Respondent's individual email address (which Complainant had secured from Domains By Proxy, Inc.) on January 15, 2009, Complainant advised Respondent of Complainant's identity and requested that Respondent transfer to Complainant the domain names , , , and . Complainant also requested that Respondent cease using the RALPH LAUREN trademarks.
- Respondent replied to Complainant's counsel via email on January 15, 2009, refusing to transfer the disputed domain names and insisting that they “are 4 sale only.”
- Complainant's counsel called and spoke to Respondent on January 26, 2009. Respondent refused to offer for under $100,000 to sell the domain names , , , and , and rejected the suggestion that he sell the disputed domain names for the costs he had incurred. Respondent also claimed to have a substantial number of other domain names incorporating the RALPH LAUREN trademarks, and suggested that he would sell them to Complainant's competitors.
- Respondent emailed Complainant's counsel on January 29, 2009, writing that he had been contacted by several companies interested in buying his RALPH LAUREN-related domain names and requesting that Complainant make a counter-offer before he proceeded with these sales.
On the basis of the above contentions, Complainant requests transfer of the disputed domain names. B. Respondent
Respondent did not reply to Complainant's contentions.3 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064.
Respondent sent several brief emails to the Center following receipt of the Notice of Complaint, and other notices. Among other things, this correspondence has shown that Respondent is aware of the present proceedings and has knowingly chosen not to submit a formal response to the Complaint.
In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain names are confusingly similar to the RALPH LAUREN trademarks, in which Complainant has rights.
Panels disregard the gTLD suffix in determining whether a disputed domain name is confusingly similar to a complainant's marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5.
Each disputed domain name fully incorporates Complainant's RALPH LAUREN mark. The Panel finds that Respondent's addition of descriptive words to Complainant's marks does not reduce the confusion experienced by Internet users. See, e.g., U-Haul International, Inc. v. Affordable Web Productions, supra; Time Warner Entertainment Company, L.P. v. HarperStephens, supra.
Further, the Panel agrees with Complainant that, because the descriptive terms added to the trademark by Respondent relate in some instances to products and services associated with the trademarks, the combination with Complainant's marks adds to the confusion (for example by use of the words “flipflops,” “boutique,” “rejects,” and “seconds”). See, e.g., Viacom International Inc. v. Erwin Tan, supra; Advance Magazine Publishers Inc. v. Lisa Whaley, supra.
The Panel concludes, therefore, that for each of the disputed domain names, Complainant has established the first element of Paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant alleges that Respondent did not have legitimate interests because Respondent is not affiliated with Complainant, that Respondent was not authorized by Complainant to register and use Complainant's trademarks, and that Respondent is not commonly known by the disputed domain names. In the absence of a response by Respondent, the Panel accepts these factual allegations as true.
Complainant also alleges that Respondent is earning revenue through sponsored link advertising by using Complainant's trademarks. In diverting traffic by creating confusion with Complainant's trademarks and using link advertisements, the Panel finds that Respondent is opportunistically taking advantage of Complainant's marks for his own commercial purposes. Deutsche Telekom AG v. Thanh Nguyen, Thanh Nguyen Mobile, WIPO Case No. DBZ2008-0002 (quoting The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 “[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit…in consideration of directing traffic to that site”; see Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
It is unnecessary for the Panel to rule on Complainant's contention that a party could never make legitimate use of Complainant's trademarks in a domain name without Complainant's authorization. The Panel finds, however, that the fact that some of the links on Respondent's parking pages direct users to competitors of Complainant eliminates the possibility of bona fide offerings or fair use, even though some of the links may direct users to genuine products of Complainant. See, e.g., Hoffmann-La Roche Inc. v. O,WIPO Case No. D2007-1806 (citing, inter alia, Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784, America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374, and Hoffmann-La Roche Inc. v. AZ Marketing Inc., Thomas Brennan,WIPO Case No. D2007-1843).
The Panel finds that Complainant has established a prima facie case. Refraining from submitting a formal response, Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain names.
The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, concealment of identity, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, supra.
Given the widespread use and fame of Complainant's RALPH LAUREN trademarks, the Panel infers that Respondent had actual knowledge of Complainant's trademarks; those trademarks had been registered and widely used for decades when Respondent registered the disputed domain names. The Panel also infers that Respondent did so intending to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's marks. Under the circumstances, therefore, the Panel concludes that Respondent registered the disputed domain names in bad faith.
Respondent's websites show that the disputed domain names are used not only to promote third-party sales of Complainant's products, but also to promote the products of Complainant's competitors. The Panel concludes that this activity demonstrates bad faith use by Respondent. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., supra; Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
Complainant has also provided proof that Respondent declined to transfer the domain names to Complainant for Respondent's costs in making and maintaining the registrations. That proof is corroborated by Respondent's February 3, 2009 email to the Center, quoted above.
Complainant also represents that Respondent stated his intention to sell some of the disputed domain names to competitors and offered to sell four of the domain names to Complainant for US $100,000. Those representations in the Complaint are uncontested by Respondent and the Panel accepts them as true.
The sum of US $100,000 clearly would exceed Respondent's out-of- pocket expenses. The Panel finds that Respondent's suggestions that he would sell the domain names to Complainant's competitors and his refusal to transfer in exchange for out-of-pocket expenses, reflected in the cited communications, is additional evidence of Respondent's bad faith registration and use. Policy paragraph 4(b)(i).
Having found that the circumstances establish Respondent's bad-faith registration and use, the Panel concludes that the requirements of Policy paragraph 4(a)(iii) are fulfilled. 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, , , , , , , , and be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Dated: March 24, 2009
1 The cases cited include several involving Complainant, 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. LucasCobb,WIPO Case No. D2006-0162; PRL USA Holdings, Inc. v. Freddy Militana,WIPO Case No. D2005-1026, and others (e.g., Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397).
2 Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
3 Respondent has sent several brief emails to the Center respecting this proceeding. In an email to the Center dated February 3, 2009, Respondent stated “The law office of [Greenberg Traurig] offered be $1500.00 that i thought was unsatisfied [sic] to me.”
Full & Egal Universal Law Academy