WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PRL USA Holdings, Inc. v. Ron Lee Case No. D2009-0269 1. The Parties
The Complainant is PRL USA Holdings, Inc. of New York, New York, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Ron Lee of Hilliard, Ohio, United States of America. 2. The Domain Name and Registrar
The disputed Domain Name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009. On February 27, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On February 27, 2009, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2009.
After the necessary replacement of the initially appointed panelist, the Center appointed W. Scott Blackmer as the sole panelist in this matter on June 22, 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 Delaware corporation headquartered in New York City. Since 1967, the Complainant and its predecessors have used RALPH LAUREN trademarks, referring to the American fashion designer Ralph Lauren, to brand “premium lifestyle products” including clothing, accessories, home furnishings and décor, and fragrances. The Complainant advertises heavily in national and international media, and it achieved sales in 2008 of USD $3.65 billion in the United States and USD $4.88 billion worldwide. The Complainant has been using a principal website at “” since 1996.
The Complainant holds registered trademarks consisting of, or prominently featuring, the name “Ralph Lauren”. These include the following:
MARK COUNTRY REG. NO. REG. DATE
RALPH LAUREN
United States
1624989
Nov. 27, 1990
RALPH LAUREN
United States
2077090
July 8, 1997
RALPH LAUREN
United States
2207011
Dec. 1, 1998
RALPH LAUREN
United States
2567308
May 7, 2002
RALPH LAUREN
United States
2578246
June 11, 2002
RALPH LAUREN BLUE
United States
2846306
May 25, 2004
RALPH LAUREN (and design)
United States
3259886
July 10, 2007
The Respondent, an individual in Hilliard, Ohio, United States of America, registered the Domain Name on September 13, 2008. In February 2009, the Domain Name resolved to a parking website headed “Ralph Lauren Shop”, displaying what appear to be pay-per-click advertising links to third parties offering a variety of designer products. Many of these compete with the Complainant's products, such as goods from Gucci, Coach, Fendi, Burberry, Chanel, Dolce & Gabbana, Christian Dior, and Louis Vuitton. The website associated with the Domain Name currently features similar links to third parties offering products by Armani, Diesel, Cart, and Hugo Boss. A link at the bottom of the landing page directs the user to a contact screen to “Inquire About This Domain”.
Counsel for the Complainant sent cease-and-desist letters to the Respondent in November and December 2008. The Respondent replied by email on December 8, 2008, asking what he was “supposed to do” with the most recent letter. The Complainant's counsel again requested the transfer of the Domain Name and subsequently initiated the current UDRP proceeding. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its RALPH LAUREN marks and that the Respondent has no rights or legitimate interests in the name. The Complainant argues that the Domain Name was registered and used in a bad-faith attempt to create a likelihood of confusion with the Complainant's marks for commercial gain. B. Respondent
On March 3, 2009, the Center informed the Complainant by email that the Center had not yet received an electronic copy of the Complaint. The Respondent was copied on this email and replied as follows in an email to the Center on the same day:
“I do not have a complaint I am willing to give up the domain name”.
The Complainant sent an electronic copy of the Complaint and exhibits to both the Center and the Respondent later that day. The Respondent did not reply to the Complainant's contentions or communicate further with the Center. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
Under paragraph 15(a) of the Rules,
“A Panel shall 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.” A. Identical or Confusingly Similar
The Complainant unquestionably holds registered RALPH LAUREN trademarks. Disregarding the nondistinctive “.info” generic top-level domain name, the Domain Name differs from the Complainant's mark only by the addition of the English word “shop”. This does not diminish the likelihood of confusion, particularly since the word “shop” is logically associated with the sale of RALPH LAUREN products.
The Panel concludes that the Domain Name is confusingly similar to the Complainant's marks for purposes of the first element of the Policy. B. Rights or Legitimate Interests
The Complainant asserts, and the Respondent does not deny, that the Complainant has not authorized the Respondent's use of a Domain Name that is confusingly similar to the Complainant's marks.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
There is no evidence in the record, or from a perusal of the website associated with the Domain Name, that the Respondent has been known by a name corresponding to the Domain Name or has relevant trademark rights. The Respondent has made commercial use of the Domain Name to advertise the goods and services of third parties. This could not be considered use in connection with a bona fide offering of goods or services where the evidence indicates, as summarized below, that the Domain Name is not a generic term and was chosen precisely for its trademark value, in a bad-faith effort to mislead Internet users and trade on the reputation of the Complainant's mark.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing, as it has in this case. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Respondent has not done so, and the Panel therefore concludes that the Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy lists the following as an instance of bad faith:
“circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.”
Previous WIPO panelists have recognized the RALPH LAUREN marks as well-known and long-established, particularly in the United States (where the Respondent is located). See, e.g., PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2009-0009. There is ample evidence to support this conclusion in the current record as well.
The Respondent does not deny awareness of the Complainant's mark. He has used the Domain Name precisely to advertise designer consumer products, including those that directly compete with the Complainant's. It is difficult to imagine a legitimate interest in choosing and employing a Domain Name that is confusingly similar to the Complainant's distinctive and well-known mark, and the Respondent has not offered one. He has not rebutted the Complainant's reasonable inference of an opportunistic intent to profit from a false association with a famous mark. Indeed, the Respondent has informed the Center that “I am willing to give up the domain name”, without actually taking steps to transfer the Domain Name to the Complainant.
The Panel concludes that the Domain Name was more probably than not registered and used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, which suffices to establish the third element 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 Domain Name, , be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: June 29, 2009
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