PRL USA Holdings, Inc. v. Polo

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRL USA Holdings, Inc. v. Polo

Case No. D2002-0148

1. The Parties

1.1 The Complainant is PRL USA Holdings, Inc., a corporation organized under

the laws of the State of Delaware, United States of America, having its principal

place of business at 103 Foulk Road, Suite 25, Wilmington, Delaware,

United States of America.

1.2 The Respondent is Polo, an entity having an address at P.O. Box 248,

Eugene, Oregon, United States of America.

2. The Domain Names and Registrar

The domain names at issue are <ralph-lauren-polo.com> and <polo-style.com>, which domain names are registered with Bulkregister.com, Inc., based in Baltimore, Maryland, United States of America ("Bulkregister.com").

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property

Organization Arbitration and Mediation Center (the "WIPO Center")

on February 14, 2002, and the signed original together with four copies

was received on February 15, 2002. An Acknowledgment of Receipt was

sent by the WIPO Center to the Complainant, dated February 21, 2002.

3.2 On February 26, 2002, a Request for Registrar Verification was

transmitted to the registrar, Bulkregister.com, requesting it to: (1) confirm

that the domain names at issue are registered with Bulkregister.com; (2) confirm

that the entity identified as the Respondent is the current registrant of the

domain names; (3) provide the full contact details (i.e., postal address(es),

telephone number(s), facsimile number(s), e-mail address(es)) available in the

registrar’s Whois database for the registrant of the disputed domain names,

the technical contact, the administrative contact and the billing contact; (4) confirm

that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in

effect; (5) indicate the current status of the domain names.

3.3 On February 26, 2002, Bulkregister.com confirmed by reply e-mail

that the domain names are registered with Bulkregister.com, are currently on

locked status, and that the Respondent is the current registrant of the names.

The registrar also forwarded the requested Whois details, and confirmed that

the Policy is in effect.

3.4 The WIPO Center determined that the Complaint satisfies the formal requirements

of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the

"Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy (the "Supplemental Rules"). The Panel has independently determined

and agrees with the assessment of the WIPO Center that the Complaint is in formal

compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental

Rules. The required fees for a sole Panelist were paid on time and in the required

amount by the Complainant.

3.5 No formal deficiencies having been recorded, on February 28, 2002,

a Notification of Complaint and Commencement of Administrative Proceeding (the

"Commencement Notification") was transmitted to the Respondent (with

copies to the Complainant, Bulkregister.com and ICANN), setting a deadline of

March 20, 2002, by which the Respondent could file a Response to the

Complaint. The Commencement Notification was transmitted to the Respondent by

e-mail to the e-mail addresses indicated in the Complaint and specified in Bulkregister.com’s

confirmation. In addition, the Complaint was sent by express courier to the

postal address given. Having reviewed the communications records in the case

file, the Administrative Panel finds that the WIPO Center has discharged its

responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably

available means calculated to achieve actual notice to Respondent."

3.6 On March 27, 2002, not having received any response, the WIPO

Center sent the parties a formal Notification of Respondent Default.

3.7 On April 12, 2002, in view of the Complainant's designation of

a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole

Panelist.

4. Factual Background

4.1 Complainant registered the trademark POLO BY RALTH LAUREN in connection

with men's suits, clothing, and accessories, and women's clothing with the United

States Patent Office ("USPTO") on February 5, 1974, and for diverse

items of wearing apparel with the USPTO on October 11, 1988. Complaint,

Annexes C1 and C13.

4.2 Complainant registered the trademark POLO with the USPTO in connection

with wearing apparel on October 1, 1985, in connection with athletic

shoes on October 11, 1988, in connection with home furnishing products

on January 7, 1992, and in connection with information in the field

of fashion and lifestyle by means of a global computer network on July 29, 1997.

Complaint, AnnexC9, C14, and C15.

4.3 Complainant registered the trademark RALPH LAUREN and design with the USPTO

in connection with suits, overcoats, sweaters, ties, shirts and pants on May 14, 1974,

and in connection with women's clothing and accessories on October 19, 1976.

Complainant registered the trademark RALPH LAUREN with the USPTO in connection

with bed and table linens and housewares on July 28, 1997, and in

connection with shoes on December 15, 1987, and in connection with

clothing on November 27, 1990. Complaint, Annexes C2, C3, C4, C5,

and C6.

4.4 During the fiscal year 1999, Ralph Lauren has net sales of $4.2 billion

for products bearing the above trademarks and similar trademarks. During this

period more than $51,000,000 was expended in advertising the products and trademarks.

4.5 On November 10, 2000, Polo launched the web site, "www.polo.com",

and in the calendar year 2001, more than six million visitors viewed the

site.

4.6 On October 6, 2001, Respondent registered the domain names at

issue.

4.7 Both domain names at issue currently link to Complainant's web site at

"www.polo.com".

4.8 Complainant apparently did not attempt to communicate with Respondent before

filing its Complaint .

5. Parties’ Contentions

5.1 Complainant contends that Respondent has registered domain names which

are confusingly similar to the trademarks registered and used by Complainant,

that Respondent has no rights or legitimate interests in respect of the domain

names at issue, and that Respondent has registered and is using the domain names

at issue in bad faith.

5.2 Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the

Panel is to use in determining the dispute: "A Panel shall decide a Complaint

on the basis of the statements and documents submitted in accordance with the

Policy, these Rules, and any rules and principles of law that it deems applicable."

6.2 Since both the Complainant and Respondent are domiciled in the United States,

and since United States’ courts have recent experience with similar disputes,

to the extent that it would assist the Panel in determining whether the Complainant

has met its burden as established by Paragraph 4(a) of the Policy, the Panel

shall look to rules and principles of law set out in decisions of the courts

of the United States.

6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each

of the following:

1) that the domain names registered by the Respondent are identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and,

2) that the Respondent has no rights or legitimate interests in respect of

the domain names; and,

3) that the domains name have been registered and are being used in bad faith.

6.4 It is clear that the domain names at issue are confusingly similar to the

trademarks in which the Complainant has rights. In the case of <ralph-lauren-polo.com>,

the combining of Complainant's trademarks with the additions of hyphens creates

a confusingly similar, if not identical, domain name. EFG Bank European Financial

Group SA v. Jacob Foundation, WIPO Case

No. D2000-0036 (<efg-private-bank.com>); The Channel Tunnel Group

Ltd. v. John Powell, WIPO Case No. D2000-0038

(<euro-tunnel.com>). In the case of <polo-style.com>, the addition

of the suffix "-style" does not destroy the substantial similarity. G.A.

Modefine SA v. AES Optics, WIPO Case No.

D2000-0306 (<armani-sunglasses.com>).

6.5 Complainant has alleged and Respondent has failed to deny that Respondent

has no legitimate interests in respect of the domain name at issue. Failure

to respond and deny this allegation entitles the Panel to draw inferences adverse

to Respondent. Alcoholics Anonymous World Services, Inc. v. Raymond,

WIPO Case No. D2000-0007; Bronson Plc

v. Unimetal Sanayai ve Tic. A.S., WIPO

Case No. D2000-0011.

6.6 Complainant failed to make any factual allegations as to nature of use.

Complainant failed to allege that Respondent was not using the domain names

at issue, and that such non-use and other actors constituted bad faith inaction

as set out first in Telstra Corporation Limited v. Nuclear Marshmallows,

WIPO Case No. D2000-0003.

6.7 The Panel entered the domain names in question and was taken on both occasions

to Complainant's commercial web site "www.polo.com". The Panel is

entitled to make this independent investigation, especially where the Complaint

lacks essential factual allegation or where the Respondent has failed to respond.

Terabeam Corp. v. Colin Goldman, WIPO

Case No. D2001-0697, at 6 and 6, n. 5. The use of the domain names

at issue currently being made by Respondent is not in bad faith.

7. Decision

For all of the foregoing reasons, the Panel decides that the domain names

registered by Respondent are confusingly similar to the trademarks in which

the Complainant has rights, that the Respondent has no rights or legitimate

interests in respect of the domain names at issue, but that Complainant

has failed to prove that the Respondent's domain names are being used in

bad faith. Accordingly, the Complaint in this matter must be dismissed.

M. Scott Donahey

Sole Panelist

Dated: April 29, 2002

More cases by this complainant

• PRL USA Holdings, Inc. v. PrivacyProtect.org/ Timmy Smith — D2011-2051 · ralphlauren-america.com, ralphlauren-usa.com · Transfer · 11 Jan 2012
• PRL USA Holdings, Inc. — D2011-1319 · Terminated
• PRL USA Holdings, Inc. v. vivienne westwood/Contact Privacy Inc. Customer 0126347680 — D2011-1292 · ralphlaurenpaint.net · Transfer · 14 Sept 2011
• PRL USA HOLDINGS, INC. v. Huang En aka huanxin; huanxin — D2010-1363 · ralphlauren2010.com, rugbyspolos.com · Transfer · 05 Oct 2010
• PRL USA Holdings, Inc. v. he fangfang / Zhang Lei / fangfang he / Protected Domain Services — D2010-1248 · outletpolo.com, outletpoloshirt.com, outletpoloshirts.com · Transfer · 25 Oct 2010
• PRL USA HOLDINGS, INC. v. Private Whois Service — D2010-1084 · rlhome.com · Transfer · 25 Aug 2010