The Complainant is PRL USA HOLDINGS, INC. of New York, United States of America, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is Huang En aka huanxin of Guangzhou, People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Jiangsu Bangning Science & technology Co. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2010. On August 12, 2010, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain names. On August 13, 2010, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 16, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant responded to the Center by email, stating that the Complaint already includes a request that English be the language of the proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 August 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 21, 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, PRL USA Holdings, Inc., is an American company that engages in designing, marketing, and distributing lifestyle products in the categories of apparel, accessories, fragrances and others.
The Complainant invested tens of millions of US dollars in advertising and promoting its products in different media, including world famous fashion magazines.
The Complainant and its affiliate companies (hereinafter jointly: "The Complainant") are the owners of numerous trademark registrations for the marks POLO,, RUGBY and RALPH LAUREN worldwide. For example: United States ("US") trademark registration No. 1363459 - POLO, with the registration date of October 1, 1985; US trademark registration No. 1222278 – RALPH LAUREN, with the registration date of January 4, 1983; US trademark registration No. 2930551 – RUGBY, with the registration date of March 8, 2005, and many more.
The Complainant has also developed a formidable presence on the Internet and is the owner of many domain names, which contain the words "polo", "rugby" and "Ralph Lauren". For example: , , , and many others.
The disputed domain name was registered on May 15, 2010. The disputed domain name resolves to an on-line marketplace, which offers for sale clothing and accessories by using the Complainant's marks.
The disputed domain name was registered on May, 8, 2010. The disputed domain name redirects users to the domain name , which resolves to an on-line marketplace that offers for sale clothing and accessories by using the Complainant's marks. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Respondent registered the disputed domain names many years after the Complainant’s trademarks achieved worldwide fame and goodwill in connection with the Complainant’s products.
The Complainant further argues that the disputed domain names are virtually identical or confusingly similar to the Complainant's marks, as they incorporate the Complainant’s marks as a whole. The Complainant further argues that the additional of the year "2010" or the letter "s" to the trademarks is insufficient to avoid likelihood of confusion with the Complainant's trademarks.
The Complainant further argues that the addition of the gTLDs ".com" to the disputed domain names is insignificant for determining whether the disputed domain names are confusingly similar to the Complainant's marks.
The Complainant further argues that the RALPH LAUREN, POLO and RUGBY marks are extremely
well-known and recognized with the Complainant worldwide. The Complainant argues that as a result of their renowned nature, the Respondent could not have obtained a right or legitimate interest in the disputed domain names.
The Complainant further argues that the Respondent is using the disputed domain names to market counterfeit goods of the Complainant. The Complainant argues that this indicates on the Respondent's lack of legitimate interest in the disputed domain names.
The Complainant further argues that the Complainant did not authorize the Respondent's to use the RALPH LAUREN, POLO and RUGBY trademarks.
The Complainant further argues that the websites operating under the disputed domain names include numerous copyrighted photographs that belong to the Complainant. The Complainant argues that the copyright infringement causes consumer confusion and constitutes bad faith.
The Complainant further argues that the Respondent generated revenue by trading upon the valuable goodwill and reputation generated by the RALPH LAUREN, POLO and RUGBY marks and thus was using the disputed domain names to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainant’s marks.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the registration agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings will be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain names consist of Latin letters and words, and do not consist of any Chinese letters or words;
b) The websites operating under the disputed domain names are in English;
c) The Respondent did not object to the Complainant’s request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the marks POLO, RUGBY and RALPH LAUREN, for example: US trademark registration No. 1363459 - POLO, with the registration date of October 1, 1985; US trademark registration No. 1222278 – RALPH LAUREN, with the registration date of January 4, 1983; US trademark registration No. 2930551 – RUGBY, with the registration date of March 8, 2005, and many more.
The disputed domain name differs from the registered RALPH LAUREN trademark by the additional indication of the year "2010" and by the additional gTLD ".com".
The disputed domain name incorporates the Complainant's RUGBY and POLO trademarks and differs from them by the addition of the letter "s" at the end of each mark and by the additional gTLD ".com".
The addition of the term "2010" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's RALPH LAUREN trademark, as it is a generic indication of the current year, which in itself is not distinctive.
The mere addition of the letter "s" at the end of the RUGBY and POLO trademarks is also insufficient to avoid confusing similarity, as the letter "s" is a non-significant element that does not change the perception derived from the domain name.
Previous WIPO UDRP panels have found that the mere addition of a non-significant element does not sufficiently differentiate the domain names from the registered trademarks: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
"The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).
Also, the addition of the gTLD “.com” to the disputed domain names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLDs “.com” is without legal significance since the use of a gTLD is technically required to operate the domain names.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to Respondent to show that he has rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use its POLO, RUGBY and RALPH LAUREN trademarks or a variation of them. The Respondent did not submit a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The Complainant submitted evidence that show that the Respondent registered the disputed domain names after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant had owned registered trademarks for its POLO, RALPH LAUREN and RUGBY marks, for many years before the Respondent had registered the disputed domain names. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademarks vast goodwill. The Panel cited the following with approval: " There is no question that Complainant’s marks are famous, distinctive, and internationally known. There can be no question that Respondent was aware of Complainant’s marks when Respondent registered the disputed domain name" PRL USA Holdings, Inc. v. J. Schwarz,WIPO Case No. D2006-0147). Accordingly, it is difficult to assume that the Respondent had no knowledge of the Complainant when registering the disputed domain names.
The Panel cites the following with approval: “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if by using the domain names it had intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain names resolved to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain names lead Internet users to websites that promote the sale of clothing and accessories through the use of the Complainant’s POLO, RUGBY and RALPH LAUREN trademarks. The Respondent’s use of the Complainant’s trademarks to promote goods that are regularly sold by the Complainant evidence that the Respondent registered the disputed domain names with knowledge of the Complainant’s trademarks and of the Complainant’s commercial use of them, and subsequently intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent made use of the disputed domain names for identical goods to the ones that are sold by the Complainant, or counterfeit goods, constitutes bad faith on behalf of the Respondent (see Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The Panel also notes that the disputed domain names are confusingly similar to the Complainant’s trademarks. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In addition, the Panel makes notice of the Complainant’s contention that the Respondent has infringed upon its copyrights. Previous panels have ruled that an intentional infringement the Complainant’s copyright may amount in itself to bad faith (TPI Holdings Inc. v. JB Designs,WIPO Case No. D2000-0216).
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the POLO, RUGBY and RALPH LAUREN trademarks in the disputed domain names and the Respondent’s apparent copyright infringement, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 names and be transferred to the Complainant
Jonathan Agmon
Sole Panelist
Dated: October 5, 2010
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