PRL USA Holdings, Inc.; Ralph Lauren Media, LLC v. Morrison & Associates

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRL USA Holdings, Inc., and Ralph Lauren Media, LLC v. Morrison

and Associates

Case No. D2001-0255

1. The Parties

The Complainants in this administrative proceeding are PRL USA Holdings, Inc.,

a Delaware corporation, with a principal place of business at 103 Foulk Road,

Suite 254, Wilmington, Delaware 19803, USA, and Ralph Lauren Media, LLC, a Delaware

limited liability company, with a principal place of business at 650 Madison

Avenue, New York, New York 10022, USA (hereinafter individually and collectively

referred to as "Complainants").

The Respondent in this proceeding is Morrison and Associates ("Respondent"),

the registrant of the domain names in issue with a listed mailing address of

6568 Bradford Ct., Rancho Cucamonga, California 91701, USA.

2. The Domain Names and Registrar

The domain names in issue are <ralphlaurenmedia.com> and <ralphlaurenmedia.net>.

The registrar of the domain names in issue is Internet Domain Registrars, d/b/a

Registrars.com ("Registrar") located at 475 Sansome Street, #570,

San Francisco, California 94111, USA.

3. Procedural History

On February 16, 2001, the Complainants filed a Complaint with the WIPO Arbitration

and Mediation Center ("Center") concerning the domain names <ralphlaurenmedia.com>

and <ralphlaurenmedia.net> and paid the required filing fee for appointing

a single member Panel. On February 22, 2001, the Center sent an "Acknowledgement

of Receipt of Complaint" to the Complainant.

On February 23, 2001, a "Request for Verification" concerning the

domain names was sent to the Registrar. On February 26, 2001, the Registrar

provided a Registrar Verification Response to the Center stating, in pertinent

part, that: (i) it had received the Center's notification concerning the

domain names in issue; (ii) it is the registrar of the domain names <ralphlaurenmedia.com>

and <ralphlaurenmedia.net>; (iii) "Morrison and Associates"

is the current registrant of the domain name registrations with a listed mailing

address of 6568 Bradford Ct., Rancho Cucamonga, California 91701, USA; and (iv)

the domain names in issue are currently under registrar-lock in the Shared Registry

Server pending arbitration.

On February 27, 2001, the Center found the Complaint to be in compliance with

the formal requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy

("Policy"), ICANN’s Rules for Uniform Domain Name Dispute Resolution

Policy ("Rules") and WIPO’s Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("Supplemental Rules").

On February 27, 2001, the Center sent a "Notification of Complaint and

Commencement of Administrative Proceeding" and the Complaint to the Respondent

at the e-mail addresses, postmaster@ralphlaurenmedia.com and postmaster@ralphlaurenmedia.net,

and to the postal address, e-mail address and facsimile number listed in the

domain name registrations. Copies of the Notification and Complaint were also

sent to ICANN, the Registrar and the Complainants. When the Notification and

Complaint were sent to the e-mail addresses, postmaster@ralphlaurenmedia.com

and postmaster@ralphlaurenmedia.net, and to the fax number listed in the registrations,

error messages were received indicating non-delivery. The Center did not receive

error messages or notices of non-delivery when the Notification and the Complaint

were sent to the e-mail and postal addresses listed in the registrations for

the Respondent.

On March 21, 2001, after the twenty day period had expired as required by paragraph

5(a) of the Rules and no response from the Respondent was received, the Center

sent a "Notification of Respondent Default" to the Respondent by e-mail

with a copy to the Complainants.

On March 26, 2001, the Center invited the undersigned Panelist to serve as

a single member panel in this proceeding. On March 27, 2001, the Panelist submitted

a "Statement of Acceptance and Declaration of Impartiality and Independence"

to the Center. On March 30, 2001, the Center sent a "Notification of Appointment

of Administrative Panel and Projected Decision Date" by e-mail to the parties

notifying them that an Administrative Panel consisting of a single Panelist

had been appointed in the proceeding.

Based upon a request from the Panelist, the Center sent an Administrative Panel

Procedural Order No. 1 on April 20, 2001, to the parties requesting further

information concerning the Complainants’ bad faith assertions and evidence of

whether or not there have been or are any Web sites accessible at the domain

names in issue. On April 25, 2001, the Complainants submitted an "Additional

Submission" to the Center. No response was received from the Respondent

in response to the Panelist’s request.

Having reviewed the entire record submitted for this proceeding, the Panelist

concurs with the Center's finding that the Complaint is in compliance with the

Policy, Rules and Supplemental Rules and finds that the panel was properly constituted

and appointed. The Panelist also finds that the Center has discharged its responsibility

under paragraph 2(a) of the Rules "to employ reasonably available

means calculated to achieve actual notice to Respondent" of this proceeding

and that the Respondent is in default for failing to file a response to the

Complaint or to the Administrative Panel Procedural Order No. 1. The Panelist

shall therefore draw inferences from the Respondent's defaults as the Panelist

considers appropriate based upon paragraph 14(b) of the Rules and shall issue

a decision based on the Complaint, the Additional Submission, the Policy, the

Rules and the Supplemental Rules.

4. Factual Background

The Complaint is based on eleven U.S. federal registrations for RALPH LAUREN

and RALPH LAUREN formative marks, including Reg. No. 984,005 for the mark RALPH

LAUREN and Design, Reg. No. 1,050,722 for the mark RALPH LAUREN and Design,

Reg. No. 1,203,658 for the mark RALPH LAUREN and Design, Reg. No. 1,469,151

for the mark RALPH LAUREN and Reg. No. 1,624, 989 for the mark RALPH LAUREN.

Copies of the registration certificates for these marks were attached as Exhibit

C to the Complaint. The Complaint is also based on the company name, Ralph Lauren

Media, LLC. The formation of Ralph Lauren Media, LLC, was publicly announced

on February 7, 2000, as a joint venture between the Polo Ralph Lauren Corporation

and NBC and certain affiliated companies.

Both of the domain names in issue were registered on February 7, 2000, to the

Respondent and each domain name resolves to a "Domain Name Holder"

Web page provided by the Registrar. Copies of the Whois records for the domain

names in issue were attached as Exhibit A to the Complaint and copies of the

corresponding Web pages were attached to the Additional Submission.

5. Parties’ Contentions

Complainants

The Complainant, PRL USA Holdings, Inc., asserts that it is the owner of eleven

federal trademark registrations for RALPH LAUREN and RALPH LAUREN formative

marks for use in connection with clothing and retail store services and that

Ralph Lauren Media, LLC under license from PRL USA Holdings, Inc., uses the

famous RALPH LAUREN marks in connection with multimedia projects via the Internet,

broadcast, cable and print. The Complainants assert that the registrations of

the RALPH LAUREN mark are conclusive evidence of the incontestability of the

RALPH LAUREN mark and attached copies of the registration certificates to the

Complaint as Exhibit C.

The Complainants assert that Ralph Lauren of the RALPH LAUREN marks is world

famous and has won numerous fashion awards. The Complainants assert that he

and his products are regularly featured or advertised in publications like The

New York Times, Vanity Fair and Vogue and in fiscal year 1999

alone, Mr. Lauren’s products had worldwide wholesale net sales of $4.2 billion.

During that same time period, the Complainants assert that more than $51,375,000

was spent advertising Mr. Lauren’s products. In addition, the Complainants assert

that the fame of the RALPH LAUREN marks has long been recognized by numerous

courts, decisions of which were attached as Exhibit D.

The Complainants assert that the domain names <ralphlaurenmedia.com>

and <ralphlaurenmedia.net> are identical or confusingly similar to the

Complainants’ federally registered RALPH LAUREN and RALPH LAUREN formative marks

owned by PRL USA Holdings, Inc., and are also identical to the Complainant’s

company name, Ralph Lauren Media, LLC.

The Complainants assert that, on March 14, 2000, it provided explicit written

notice to the Respondent of the Complainants’ prior rights in the RALPH LAUREN

mark, and in which it demanded that the Respondent withdraw its registrations

for the <ralphlaurenmedia.com> and <ralphlaurenmedia.net> domain

names (a copy of this letter attached as Exhibit F). The Complainants assert

that, after receiving no response, they again contacted the Respondent on June

7, 2000, reiterating their previous demands, to which they again did not receive

a response.

The Complainants assert that the Respondent, which does business under the

name of Morrison and Associates, has no rights to the name or mark RALPH LAUREN.

In addition, the Complainants assert that there is no evidence to indicate that

the Respondent owns any trademark registrations, which are comprised, in whole

or in part, of the mark RALPH LAUREN, does not do business under the name comprised

in whole or in part of the mark RALPH LAUREN, and is not commonly known by any

name which includes the RALPH LAUREN name or mark.

The Complainants assert that the Respondent has registered and used the <ralphlaurenmedia.com>

and <ralphlaurenmedia.net> domain names in bad faith because: (1) the

Respondent does not own any trademark registrations which include the mark RALPH

LAUREN, nor does it do business under the name RALPH LAUREN, nor is Ralph Lauren,

the name of any individual associated with the Respondent; (2) due to the fame

of the RALPH LAUREN marks, the Respondent can hardly allege that it was unaware

that the mark is owned by another entity; (3) the Respondent’s domain names

are identical to the company name of the Complainant, Ralph Lauren Media, LLC;

and (4) the Respondent did not respond to either the notice letter, sent return

receipt requested, by PRL USA Holdings, Inc.’s counsel or to the follow-up letter.

The Complainants further assert that the Respondent did not register the domain

names in issue until long after the RALPH LAUREN marks became famous and that

there cannot be any other explanation for the Respondent’s registration of these

domain names except that the Respondent, by registering the domain names incorporating

the world-famous RALPH LAUREN marks, intentionally attempted to attract, for

commercial gain, Internet users to its web site by creating a likelihood of

confusion with the Complainant’s RALPH LAUREN marks, as to the source, sponsorship,

affiliation or endorsement of the Respondent’s Web sites. The Complainants assert

that at the very least, this conduct raises a presumption of bad faith, which

the Respondent has chosen not to rebut.

Respondent

No responses were received from the Respondent with respect to this proceeding.

6. Discussion and Findings

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit

to a mandatory administrative proceeding in the event that a third party complainant

asserts to an ICANN approved dispute resolution service provider that:

(i) the domain name holder’s domain name is identical or confusingly similar

to a trademark or service mark in which the complainant has rights ("Element

(i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect

of the domain name ("Element (ii)"); and

(iii) the domain name of the domain name holder has been registered and is

being used in bad faith ("Element (iii)").

The Panelist can only rule in a complainant’s favor after the complainant has

proven that the above-listed elements are present.

Element (i) - Domain Names Identical or Confusingly Similar to the Mark

A complainant in a proceeding brought under the Policy must have rights in

the relevant trademark or service mark cited in that proceeding. In the present

proceeding, although the Complainant, PRL USA Holdings, Inc., asserts ownership

in the marks filed to support the Complaint, the trademark documentation provided

by the Complainants did not identify PRL USA Holdings, Inc., as the owner of

these registrations. Nor did the Complainants provide guidance in the Complaint

as to the relationship between the Complainants and the various companies identified

as the mark owners in the submitted copies of the registration certificates.

Online searching concerning the cited registrations, however, verified that

the Complainant, PRL USA Holdings, Inc., is the last listed owner of these registrations

with the U.S. Patent and Trademark Office. The Panelist therefore finds this

sufficient to conclude that the Complainants have rights in the RALPH LAUREN

and RALPH LAUREN formative marks cited in the Complaint.

Comparing the second-level domain "ralphlaurenmedia" of the domain

names in issue with the Complainants’ mark RALPH LAUREN, the Panelist finds

that the domain names in issue are confusingly similar to the Complainant’s

mark and that Element (i) has been satisfied. (Footnote

1)

Element (ii) - Rights or Legitimate Interests in the Domain Names

Paragraph 4(c) of the Policy sets out circumstances, in particular but without

limitation, which, if found by the Panelist to be proven based on the evaluation

of all of the evidence presented, can demonstrate the domain name holder’s rights

to or legitimate interests in the domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’s 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) the holder (as an individual, business, or other organization) has been

commonly known by the domain name, even if the holder has acquired no trademark

or service mark rights; or

(iii) the domain name holder is 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.

The Complainants assert that at no time have they ever assigned, granted, licensed,

sold, transferred or in any way authorized the Respondent to register or use

their marks or the company name, Ralph Lauren Media, LLC, in any manner or form.

Nor has any evidence been presented that the Respondent, before notice of this

dispute, was using or making demonstrable preparations to use the domain names

in issue in connection with any bona fide offering of goods or services or has

been commonly known, as an individual, business or otherwise, by these domain

names. Although the domain names in issue do resolve to Web pages, such "Domain

Name Holding" pages do not support a finding that the Respondent was making

a legitimate noncommercial or fair use of the domain names. Thus based upon

the Complainants’ assertions and the lack of evidence to show otherwise, the

Panelist finds that the Respondent has no rights or legitimate interests in

the domain names in issue and that Element (ii) has been satisfied.

Element (iii) - Domain Names Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in

bad faith by the domain name holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of the holder’s documented out-of-pocket costs

directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner

of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that the holder has engaged in a pattern of such conduct;

or

(iii) the holder has registered the domain name primarily for the purpose of

disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract,

for commercial gain, Internet users to the holder’s website or other online

location, by creating a likelihood of confusion with the complainant's mark

as to the source, sponsorship, affiliation, or endorsement of your website or

location or of a product or service on the holder’s website or location.

Based upon the uncontested evidence submitted by the Complainants, the Panelist

finds that the Respondent had knowledge of the Complainants' mark RALPH LAUREN

and particularly, the Complainants' company name, Ralph Lauren Media, LLC, when

registering the domain names <ralphlaurenmedia.com> and <ralphlaurenmedia.net>.

This finding is predicated on the fact that the domain names in issue were registered

on the same day that a press release was issued announcing the formation of

a new company, Ralph Lauren Media, LLC. Coupled with the fact that the Respondent

registered this new company name in both the .COM and .NET Top Level Domains

together with the above findings that the domain names in issue are confusingly

similar to the Complainants' mark RALPH LAUREN and that the Respondent has no

rights or legitimate interests in the domain names, the Panelist finds that

the Respondent registered these domain names in bad faith.

The Policy also requires that the Complainants present evidence of the Respondent

using the domain names in issue in bad faith. While Paragraph 4(b) of the Policy

sets forth four specific circumstances of bad faith registration and use, the

Panelist notes that it is well established that evidence of bad faith use is

not limited to these circumstances, but in given factual situations, "being

used in bad faith" can also be found by inaction or "passive holding" of a domain

name by a respondent. Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO

D2000-0003, ¶ 7.9 (February 18, 2000).

Viewing the evidence and assertions submitted, the Panelist finds the Respondent's

inactions result in the domain names being used in bad faith and base this finding

on: (i) the Complainants' marks having a strong reputation and being widely

known; (ii) the domain names in issue resolving merely to "Domain Name Holding"

Web pages since the registrations thereof; and (iii) no evidence being presented

of any type of actual or contemplated legitimate noncommercial, good faith or

fair use of the domain names since they were registered by the Respondent over

a year ago. The Panelist thus concludes that the Respondent registered and is

using the domain names in issue in bad faith and that Element (iii) has therefore

been satisfied.

7. Decision

The Panelist concludes that: (i) the domain names <ralphlaurenmedia.com>

and <ralphlaurenmedia.net> are confusingly similar to the Complainants’

mark RALPH LAUREN; (ii) the Respondent has no rights or legitimate interests

in these domain names; and (iii) the Respondent has registered and is using

these domain names in bad faith. The Panelist therefore requires that the registrations

of the domain names <ralphlaurenmedia.com> and <ralphlaurenmedia.net>

be transferred to the Complainant, PRL USA Holdings, Inc.

Marylee Jenkins

Sole Panelist

Dated: May 31, 2001

Footnotes:

1. The Complainants have also asserted that the domain names in issue are identical

to the company name, Ralph Lauren Media, LLC. Based upon the Panelist's finding

that the domain names in issue are confusingly similar to the Complainant’s

registered mark RALPH LAUREN, it is not necessary to make a finding of whether

there is a common law right in the name and whether the domain names in issue

are identical thereto. (back to text)