PRL USA Holdings, Inc. v. Elyn Latta

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRL USA Holdings, Inc. v. Elyn Latta

Case No. D2002-0314

1. The Parties

The Complainant is PRL USA Holdings, Inc., 103 Foulk Road, Suite 254, Wilmington, Delaware, United States of America.

The Respondent is Elyn Latta, 15806 Calle El Capitan, Green Valley, California, United States of America..

2. The Domain Name and Registrar

The Domain Names are <ralphlaurensheets.com> and <ralphlaurensheets.net> and the Registrar is Go Daddy Software, Inc., United States of America.

3. Procedural History

A Complaint was submitted to the WIPO Arbitration and Mediation Center ("the Center") on April 2, 2002. On April 10, 2002, the Registrar verified the registration. The Center determined that the Complaint satisfied formal filing requirements.

On April 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was electronically transmitted to the parties indicating a Response due by May 5, 2002. Respondent was properly notified by email to the address of the owner who was also the administrative, billing and technical contact. Notice was also emailed to postmaster@ both of the disputes domain names. In addition, hard copies were shipped by courier to the Respondent at the address indicated in the registration however delivery was refused. No Response having been received, on May 7, 2002, the Center transmitted a Notification of Respondent Default by email.

On May 17, the Center sent a Notification of Panel Appointment appointing Diane Cabell, who had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further submissions were received.

4. Factual Background

The Complainant, PRL USA Holdings, Inc. ("PRL") is represented in this proceeding by Anthony F. Lo Cicero, Esq., of Amster, Rothstein & Ebenstein in New York, NY, United States of America. PRL is the owner of the Ralph Lauren and Ralph Lauren-formative trademarks, at least one of which (No. 1,449,785) is for "towels, sheets, pillow cases, pillow shams, etc." and has been listed on the USPTO’s Principal Register since July 28, 1987.

The disputed domains were both registered with Go Daddy Software, Inc. on October 24, 2001 and parked on the Registrar’s domain servers. They do not resolve to any active website nor is there any indication that they ever have. The Respondent has failed to respond to the current Complaint.

5. Parties’ Contentions

A. Complainant

PRL alleges that the domain names <ralphlaurensheets.com> and <ralphlaurensheets.com> are confusingly similar to its registered "Ralph Lauren" marks, citing US case law holding that confusion exists where there is identity with the distinctive aspects or dominant portions of the mark. The fame of the Ralph Lauren mark and its use with goods described in the domain name are also cited as increasing the possibility of confusion.

PRL asserts that Respondent has no rights in the Ralph Lauren name or mark under any of the criteria for rights and legitimate interests that are described in the UDRP Policy.

PRL also assets that Respondent is acting in bad faith because (a) she has no rights or legitimate interests, (b) she must be aware of the mark owners rights due to its fame and (c) she has failed to respond to any cease and desist notices sent by PRL.

B. Respondent

Respondent did not respond.

6. Discussion and Findings

Section 4(a) of the UDRP Policy requires the Complainant to prove that

each of three elements is present:

(i) that the domain name is identical or confusingly similar to a

trademark or service mark in which the complainant has rights; and

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

of the domain name; and

(iii) the domain name has been registered and is being used in bad

faith.

The Panelist finds that the domain names are confusingly similar to the

mark particularly where the mark is used specifically on the product identified

in the domain name.

There is no evidence to indicate whether Respondent has any rights or legitimate

interests in the name "ralphlaurensheets."

The Complainant has unfortunately failed to establish any bad faith use

of the domain name hence the Complaint must fail.

In adopting the dual requirement of bad faith in both registration and

use, ICANN specifically considered and rejected suggestions to alter the

Policy to merely require proof of one or the other. See Section 4.5(a) of

the Second Staff Report on Implementation Documents for

the Uniform Dispute Resolution Policy at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm.

PRL’s argument that a lack of rights may also serve as proof of bad faith

simply does not conform to the clear requirement of the Policy that both

elements must be established. The fact that a mark is famous is not proof,

of itself, that the registration was made or used in bad faith. It simply

denotes the likelihood of awareness of the mark and no more. Nor is Respondent’s

failure to respond to PRL’s cease and desist notices proof of bad faith

use of the domain name. It might just as easily support an interpretation

that Respondent was well aware that she has not infringed the mark and has

no obligation to respond to groundless demands.

Although RLP may well have grounds for an infringement action under the

Anti-cybersquatting Consumer Protection Act, it does not yet have grounds

for an action under the UDRP.

7. Decision

Since the Complainant has failed to establish all the required elements

of Section 4(a) of the UDRP, the Panelist finds in favor of the Respondent

domain holder in regard to both <ralphlaurensheets.net> and <ralphlaurensheets.com>.

This decision is without prejudice to any later action which the Complainant

may bring based on different facts.

Diane Cabell

Sole Panelist

Dated: May 31, 2002

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