PRL USA Holdings, Inc. v. Alvaro Collazo

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRL USA Holdings, Inc. v. Alvaro Collazo

Case No. D2002-0108

1. The Parties

The Complainant is PRL USA Holdings, Inc, a Delaware (USA) limited partnership

with its principal place of business in Wilmington, Delaware USA, represented

by Anthony F. LoCicero and Holly Pekowsky of the law firm Amster, Rothstein & Ebenstein,

New York, New York, USA.

The Respondent is Alvaro Collazo, an individual who resides in Tarariras, Colonia,

Uruguay. No attorney or other representative has appeared on Respondent's behalf

in this proceeding.

2. Domain Name and Registrar

The domain name at issue (Domain Name) is:

<e-polo.com>.

According to the "whois" database, Respondent registered the Domain Name on

December 10, 2001.

The registrar is iHoldings.com, Inc., doing business as dotregistrar.com.

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center (the Center) received Complainant's

Complaint on January 31, 2002 (electronic copy), and February 5, 2002

(hard copy). The Center verified that the Complaint satisfied the formal requirement

of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), 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). Complainant made the required payment to the Center.

On February 5, 2002, the Center transmitted via email to the Registrar a request

for registrar verification in connection with this case. When no reply was received,

the Center sent a reminder on February 10, 2002. On February 15, 2002,

the Center confirmed from the whois database that Respondent is the owner and

administrative and technical contacts for the Domain Name.

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules, on February 15, 2002, the Center transmitted

to the Respondent, via post/courier and e-mail, a Notification of Complaint

and Commencement of the Administrative Proceeding. The formal date of the commencement

of this administrative proceeding was originally February 15, 2002.

The Center received no Response from Respondent by March 10, 2002,

the deadline for submitting a Response. Accordingly, on March 11, 2002,

the Center sent a notice of default to Respondent by post/courier and e-mail.

On March 12, 2002, the Center advised the parties by email that it

had sent the original notification of Complaint to the wrong postal address

for Respondent. The Center cancelled its original notice of default, and re-sent

the Notification of Complaint and Commencement of the Administrative Proceeding

to Respondent by post/courier and e-mail, with a new date of March 12, 2002,

as the date of commencement of administrative proceedings.

On March 13, 2002, Respondent sent an email message to the Center's case administrator,

stating:

"I live in Uruguay and I raise polo horses and I'm planning to offer my

horses for sale thru the internet. I consider that this trial is very unfair.

Polo is FIRST a sport and THEN a mark of clothes. You need to do a better research."

The Center replied by email, inquiring if Respondent would submit a formal

Response. Respondent replied by email as follows:

"My limited english is not sufficient and I consider my last email an

answer good enough to be taken seriously. Of course, the lawyers of Ralph Lauren

have more power and money, but my business is as legitimate as theirs. . . .

"

The Center advised Respondent that its emails would be considered his Response,

pointing out that he had until April 1, 2002, to make a formal submission.

Respondent notified the Center on March 15, 2002, that his earlier

emails should be considered his Response.

By email message dated March 15, 2002, counsel for Complainant requested

an opportunity to submit a reply. The Center informed Complainant that this

request would be referred to the Panel after its appointment. In Procedural

Order No. 1, dated March 28, 2002, this Administrative Panel denied

this request[1].

In view of the Complainant's designation of a single panelist and Respondent's

default the Center invited Mr. Richard G. Lyon to serve as a Panelist.

After receiving Mr. Lyon's Statement of Acceptance and Declaration of Impartiality

and Independence, on March 26, 2002, the Center transmitted to the

parties a Notification of Appointment of Administrative Panel. The projected

decision date is April 9, 2002.

I find that the Administrative Panel was properly constituted and appointed

in accordance with the Rules and Supplemental Rules, and that the Panel has

jurisdiction over this dispute.

The Administrative Panel shall issue its decision based on the Complaint, the

evidence presented, the Policy, the Rules, and Supplemental Rules.

4. Factual Background

Complainant, an affiliate of fashion designer Ralph Lauren, is the owner of

many trademarks, service marks, and trade names incorporating a polo motif.

These marks (collectively, the Marks) include POLO, POLO SPORT, POLO STORE,

POLO RALPH LAUREN, and a fanciful design of a polo player on a horse, among

many others. The POLO brand is world famous in fashion, design, and other areas

of commerce. Complainant's affiliates manufacture and sell (directly and through

distributors) diverse products and render diverse services under their many

POLO marks. Many of the Marks are registered in the United States and around

the world[2].

Complainant has not licensed Respondent to use its name or marks.

Respondent sells polo horses in Argentina. He uses the Domain Name for a web

site that describes his horses and provides certain regulations governing the

game of polo and polo horses in Argentina. The web site has no reference to

apparel, home furnishings, or any business other than polo horses.

5. Parties' Contentions

The Complainant's contentions may be summarized as follows:

The Domain Name incorporates Complainant's principal Mark and is therefore

confusingly similar or identical to its Marks. The Marks are famous and have

acquired secondary meaning as identified with Complainant and its goods and

services and the high quality associated with those goods and services. Respondent

has no rights or legitimate interests in respect to the Domain Name; he does

not use the word polo in his business and has no registered trademark

that includes the word polo. Because of the Marks' renown, Respondent

was surely aware of Complainant's name and rights when it registered the Domain

Name. Bad faith should be presumed from the foregoing.

Respondent's contentions are quoted in part 3 above.

6. Relevant Standards

The Complainant must prove the elements set out in paragraph 4(a) of the Policy.

These elements are as follows:

(i) Respondent's Domain Name is identical or confusingly similar to a trademark

or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain

Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad

faith.

Complainant bears the burden of proof on each of these elements.

7. Discussion and Findings

This case is easily resolved for two independent reasons. First, Complainant

has not alleged any facts from which I could find the second and third elements

of paragraph 4(a). The sole allegations on these matters, set out in the

margin[3], are, standing alone, inadequate

to make out either lack of legitimate interest or bad faith in registration

or use. I cannot infer lack of legitimate interest or bad faith from the Complaint,

even if I accept as true (as I do) the extent, fame, and value of the Marks.

Nothing in the Complaint identifies any infringing or other improper conduct

by Respondent. The only conduct at all of Respondent referred to in the

Complaint is registration of the Domain Name.

Second, and more importantly, examination of Respondent's web site both demonstrates

Respondent's legitimate interest in the Domain Name and confirms that he has

done nothing that constitutes bad faith. Polo is an ancient game, originating

in Asia and now played around the world. As noted in Respondent's email, the

word and the game antedate Complainant's use of it Marks, by many centuries.

As a seller of polo horses, Respondent is entitled to use this common English

(and Spanish) word in his Domain Name. There is no evidence (indeed no allegation)

that he is competing with Complainant, using the Domain Name to divert or attract

Complainant's customers, tarnishing Complainant's Marks, extorting Complainant

into buying the Domain Name, or otherwise acting improperly. Respondent is actively

using the Domain Name for what appears to be an entirely legitimate business[4],

a fact that belies any possible claim[5]

that Respondent registered the Domain Name with the intent to sell it to Complainant.

Complainant has made its Polo brands world famous, in many areas of goods and

services. This commercial and marketing success does not, however, give Complainant

the exclusive right to all domain names employing the word polo. That

fact is especially noteworthy in this case, where Complainant has shown no competitive

injury. The Policy and the Rules require proof of no legitimate interest and

bad faith. That proof is utterly lacking in this case.

8. Decision

For the foregoing reasons, the Complaint is dismissed.

Richard G. Lyon

Sole Panelist

Dated: April 3, 2002

1. Rule 12 authorizes additional submissions

only by permission of the Panel. As is true of most Panelists, I believe that

such permission should be granted sparingly, to maintain the format and expedited

nature contemplated by the Rules. There is nothing in Respondent's e-mails that

Complainant could not reasonably have anticipated, or any other reason to depart

from the ordinary procedure.

2. The earliest registered Mark submitted

with the Complaint dates from 1974.

3. "Respondent's bad faith in registering

and using the Domain Name< e-polo.com> is evident in a number of ways.

First, Respondent owns no trademark registrations which include the mark POLO,

nor does he do business under the name Polo.

Second, due to the fame of [Complainant's] Polo trademarks . . . , Respondent

can hardly allege that he was unaware that the mark is owned by another entity."

Complaint, V.

4. There is no foundation in the record for

Complainant's conclusionary allegation to the contrary.

5. As noted, Complainant makes no such claim.

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