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 Private Whois Service of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On the same date, 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 July 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2010.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on August 11, 2010. 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 in the business of designing and marketing lifestyle products. It uses the trademarks RALPH LAUREN and RL among others for its products and services. Some of its registered marks are:
TRADEMARK
REG. NUMBER
REG. DATE
INT. CLASS
FIRST USE IN COMMERCE
RL
2,891,892
October 5, 2004
3
2003
RL
3,687,528
September 22, 2009
18
1995
RL
2,312,818
February 1, 2000
25
June 26, 1984
RL (Device)
2,101,662
September 30, 1997
25
March 29, 1996
RL GIRL TV
3,234,164
April 24, 2007
41, 44, 45
February 1, 2003
RL MAGAZINE
3,473,299
July 22, 2008
41
2001
RL TV
3,614,006
April 28, 2009
41
2004
RLX
2,276,536
September 7, 1999
25
1998
The Respondent registered the disputed domain name on December 29, 2003. 5. Parties’ Contentions A. Complainant
The Complainant describes itself as a leading company in the area of premium lifestyle products that include apparel, accessories, fragrances and home furnishings. It owns numerous subsisting United States (“U.S.”) trademark registrations and international registrations for its marks RL and RALPH LAUREN. Other variants of its RL marks include DOUBLE RL, RL TV, RL GIRL TV, RL MAGAZINE and RLX. It states that it has used its RL mark in commerce since 1984 and that many of its marks have now reached incontestable status under U.S. trademark law.
The Complainant alleges that due to the quality of its goods and services and substantial advertisements, its marks have become distinctive of its products and services. It states it registered the domain name in May 2001, and uses this website, which is prominently titled as “Ralph Lauren Home” to conduct its business.
The Complainant refers to several cases in support of its contentions, and states that the disputed domain name is virtually identical and confusingly similar to its registered RL marks as it combines its mark with a generic word. The Respondent has no rights or legitimate interests in the disputed domain name but uses it to exploit Complainant’s well-known trademarks to generate revenue from pay-per-click (PPC) links, which is not legitimate use under the Policy.
The Complainant states the Respondent’s website has extensively used its famous RALPH LAUREN mark with no authorization to do so, which is an indication of the Respondent’s bad faith use to disrupt the Complainant’s business. The Respondent did not reply to the Complainant's letters dated August 23, 2007 and August 30, 2007, and uses a privacy shield, which also shows its bad faith intention in registering and using the disputed domain name. The Complainant therefore requests for the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Complainant in these proceedings has to establish three elements under paragraph 4 (a) of the Policy.
(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
(ii)The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element requires the Complainant to prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.
The Complainant has stated that it is the proprietor of the RL trademark and has extensively used the mark as the registered proprietor. The Complainant has also provided documents of its registered marks in several classes. In particular, the trademark registration No. 2,312,818 under class 25 shows the Complainant has used the RL mark in commerce since June 26, 1984. The Panel is satisfied that the Complainant has demonstrated its rights in the RL mark.
The disputed domain name in the present case has the two letter mark RL and the word “home”. The Complainant has argued that the use of the word “home” along with its RL mark renders it virtually identical and confusingly similar to its mark particularly as the Complainant promotes its website as “Ralph Lauren Home”. The Panel finds there is sufficient evidence showing the Complainant’s use of its RL mark, further the Complainant has also shown that it has used its mark for products such as home furnishings and home decor. Therefore the use of the word “home” by the Respondent with the Complainant’s mark is likely to further heighten Internet user confusion. The Respondent has tried to imitate the manner in which the Complainant uses its mark by choosing a confusingly similar domain name. Furthermore, given the Complainant’s use of “Ralph Lauren Home” on its website for its products and the Respondent’s extensive use of the RALPH LAUREN mark on its website, it is likely to heighten user confusion.
The disputed domain name is therefore found to be confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
The second element requires the Complainant to make a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has asserted that it has not given any authorization or license to the Respondent to use its mark either in the disputed domain name or on its website. The Panel notes that the Complainant had sent notices to the Respondent in the year 2007, and the Respondent was put on notice regarding the use of the Complainant’s mark, and has chosen not to respond to the notices.
The Respondent did not file a Response in these proceedings to counter the Complainant’s allegations. Further, there is no material on record that shows the Respondent’s use of a name corresponding to the disputed domain name or any other material to show that the Respondent may have any rights or legitimate interests under the provisions of paragraph 4(c) of the Policy or otherwise.
The Respondent’s website displays several PPC links and has used the Complainant’s RALPH LAUREN marks on its webpage. In the Panel’s view, under these circumstances it is reasonable to infer that the Respondent has registered the disputed domain name containing the Complainant’s mark in order to obtain revenue from its sponsored PPC links, by targeting the Complainant’s customers to derive web traffic. It is well established that such use is not recognized as legitimate use under the Policy.
In the absence of any material on the record indicating the Respondent may have some rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has made a prima facie case sufficient to support its case. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and used in bad faith by the Respondent.
The Complainant has filed screen shots of the Respondent’s website that shows extensive use of the Complainant’s marks. The blatant use of the Complainant’s mark clearly shows the Respondent’s awareness of the Complainant’s marks. It can be inferred from these circumstances that the Respondent has registered the disputed domain name and uses it to exploit the Complainant’s mark. Such registration and use has been recognized as bad faith use of a domain name under the paragraph 4(b)(iv) of the Policy. Further, adverse inference can be drawn from the Respondent’s failure to respond to the Complainant’s notices. See Home Interiors & Gifts Inc. v. Home Interiors,WIPO Case No. D2000-0010.
It is likely that the use of the Complainant’s marks on the Respondent’s website is for the purpose of attracting more web traffic of Internet users looking for sites associated with the Complainant. See for instance Neteller plc v. Prostoprom,WIPO Case No. D2007-1713, (Frequent use of the complainant’s mark is designed to increase Internet traffic to the respondent’s website by providing greater levels of attraction to search engines searching on that expression). Further, the use of the disputed domain name in association with a website having PPC links targeted to the Complainant’s goods or affiliated advertisements shows the Respondent’s intention of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
The Complainant’s marks are well known and the Respondent has knowledge that the RALPH LAUREN and RL marks refer to the Complainant. Given the overall circumstances of the case, where the Respondent has not merely used the two letter abbreviation in the disputed domain name, but has also used the RALPH LAUREN mark on its website, the Panel finds bad faith registration and use of the disputed domain name from the entire circumstances of the case. The Panel finds the disputed domain name has been registered for the trademark value of the Complainant’s mark and to attract users to the Respondent’s website, due to the likelihood of confusion with the Complainant’s trademark, which is recognized as bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant has established the third element under paragraph 4(a) 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.
Harini Narayanswamy
Sole Panelist
Dated: August 25, 2010
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