PRL USA Holdings, Inc. v. Mark Fletcher

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRL USA Holdings, Inc. v. Mark Fletcher

Case No. D2002-0388

1. The Parties

The Complainant is PRL USA Holdings, Inc., a Delaware (United

States of America) corporation with its principal place of business located

at 103 Foulk Road, Suite 25, Wilmington, DE 19803, United

States of America. The Complainant is represented by Anthony F. Lo Cicero of Amster,

Rothstein & Ebenstein located at 90 Park Avenue, New York,

New York 10016, United States of America.

The Respondent is Mark Fletcher whose address is 15 Mills Avenue,

Newhall, Sutton Coldfield, West Midlands, B76 1RW, United Kingdom.

The Respondent has not filed a Response and is not represented.

2. The Domain Name and Registrar

The domain name at issue is <ralphlaurenglasses.com>. The domain name

is registered with Core Internet Council Of Registrars located at World Trade Center II,

29 route de Pre-Bois, CH-1215 Geneva, Switzerland. (the

"Registrar").

3. Procedural History

The Complaint submitted by the Complainant was received by electronic mail

on April 25, 2002, and in hard copy on April 29, 2002, by

the World Intellectual Property Organization Arbitration and Mediation

Center ("the Center").

On April 29, 2002, a request for Registrar verification was transmitted by

the the Center to the Registrar, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant

as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain name at issue is registered with the Registrar.

- Confirm that the person identified as the Respondent, Mr. Mark Fletcher,

is the current registrant of the domain name.

- Provide full contact details available in the Registrar’s WHOIS database

for the registrant of the disputed domain name, the technical contact, the administrative

contact and the billing contact for the domain name.

- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP")

is in effect.

- Indicate the current status of the domain name.

By email dated April 29, 2002, the Registrar advised the Center as

follows:

- It had received a copy of the Complaint from the Complainant.

- It is the Registrar of the domain name registration <ralphlaurenglasses.com>.

- The Respondent Mark Fletcher of 15 Mills Avenue, Newhall, Sutton Coldfield,

West Midlands, B76 1RW, United Kingdom, is shown as the current registrant of

the domain name.

- The administrative contact is Domains Manager (COCO-473866), Tech House

The Royal Works, Coleshill Street, Sutton Coldfield, Birmingham B72 1SJ,

England. The Technical contact is TotalNIC Hostmaster, P.O. Box 383, Dickson,

ACT, 2602 Australia.

- The UDRP applies to the registration.

- The domain name registration <ralphlaurenglasses.com> is currently

active (‘production’).

- The Registrar has currently incorporated in its agreements the policy

for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") (hereinafter simply "the

Policy").

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules for Uniform Domain Name Resolution Policy ("the Rules"),

on April 30, 2002 the Center transmitted by post-courier and by email

and fax a notification of the Complaint and Commencement of Administrative Proceedings

to the Respondent. A copy of the Complaint was also emailed to the Registrar

and ICANN. The Respondent was advised that a Response to the Complaint was required

within 20 calendar days. The Respondent was also advised that any Response

should be communicated, in accordance with the Rules, by four sets of hard copy

and by email.

On May 15, 2002, a package containing the Notification of Complaint and the

Complaint was returned from the Respondent's postal address by courier.

No Response was received by the Center from the Respondent within the prescribed

time. A Notification of Respondent Default was issued on May 22, 2002.

The Complainant elected to have its Complaint resolved by a single Panelist.

The Center invited Mr. Ross Carson to be the Panelist. It transmitted

a statement of acceptance to Mr. Carson and requested a declaration of

impartiality and independence.

The Panelist forwarded to the Center the Statement of Acceptance and an executed

declaration of impartiality and independence. The Panel finds that the Administrative

Panel was properly constituted in accordance with the Rules and the Supplemental

Rules.

On May 30, 2002,the Center forwarded to the Panelist by courier the Complaint

and submissions. In the absence of exceptional circumstances, the Panel is required

to forward its decision by June 13, 2002.

4. Factual Background

(a) The Trademarks

The Complainant owns the well known RALPH LAURENT trademarks including the

following United States Trademarks for RALPH LAUREN and RALPH LAUREN-formative

marks:

Reg. No. 1,053,873 registered December 7, 1976 for RALPH LAUREN and Design

for frames for prescription and non-prescription lenses, and complete sunglasses.

Reg. No. 1,057,453 registered February 1, 1977 for POLO BY RALPH LAUREN for

frames for prescription and non-prescription lenses, and complete sunglasses.

Reg. No. 2,175,394 registered July 21, 1998 for RALPH for frames for prescription

and non-prescription lenses, and complete sunglasses.

Reg. No. 978,166 registered February 5, 1974 for POLO BY RALPH LAUREN for men's

suits, slacks, ties, sweaters, shoes, shirts, hats, belts, socks and ladies'

blouses, skirts, suits and dresses.

Reg. No. 984,005 registered May 14, 1974 for RALPH LAUREN & Design for

suits, overcoats, sweaters, ties, shirts and pants.

Reg. No. 1,050,722 registered October 19, 1976 for RALPH LAUREN & Design

for women's clothing, namely, topcoats, raincoats, jackets, suit jackets, suit

coats, sport coats, sport jackets, blazers, blouses, shirts, shirt jackets,

pants, skirts, dresses, sweaters, tee shirts, hats and scarves.

Reg. No. 1,449,733 registered July 28, 1987 for RALPH LAUREN for rattan and

wicker furniture and pillows.

Reg. No. 1,671,467 registered January 7,1 992 for RALPH LAUREN for glass stemware,

glass beverageware, glass bowls, dinnerware, namely, plates, cups, saucers and

bowls.

Reg. No. 1,469,151 registered December 15, 1987 for RALPH LAUREN for men's,

women's and children's dress and athletic shoes.

Reg. No. 1,624,989 registered November 27, 1990 for RALPH LAUREN for clothing,

namely suits, slacks, trousers etc.

Reg. No. 2,046,657 registered March 18, 1997 for LAUREN RALPH LAUREN for wearing

apparel, namely, topcoats, raincoats, jackets, suit jackets, suit coats, etc.

Reg. No. 2,077,090 registered July 8, 1997 for RALPH LAUREN for providing information

in the field of fashion, lifestyle and other topics of general interest by means

of a global computer network.

The Complainant has attached copies of the Certificates of Registration as

Exhibit C.1-12.

Complainant submits that Ralph Lauren, whose name forms the basis of the RALPH LAUREN

trademarks, is world famous and has won numerous fashion awards. His products

are regularly featured or advertised in publications such as The New York Times,

Vanity Fair and Vogue. In fiscal year 1999, Mr. Lauren's products had worldwide

wholesale net sales of $4.2 billion and $51 million was spent on advertising

Mr. Lauren's products.

Complainant advises that the fame of the RALPH LAUREN trademarks as well as

Complainant's POLO and POLO-formative marks, have long been recognized by the

courts. Complainant has provided a list of decisions and copies of cases involving

Polo Fashions, Inc.

5. Parties’ Contentions

Complainant

(a) The domain name <ralphlaurenglasses.com> is confusingly similar

to the Complainant's federally registered RALPH LAUREN and RALPH LAUREN-formative

trademarks and service marks.

Complainant submits that the addition of the descriptive term "glasses" to

the domain name is not sufficient to distinguish it from Complainant's RALPH LAUREN

mark.

Complainant submits that the likelihood is even more pronounced since the RALPH LAUREN

trademarks are famous.

Complainant submits that the likelihood of confusion is strong because Respondent's

domain name indicates that it sells goods identical to those sold by Complaint,

namely sunglasses.

(b) Respondent has no rights or legitimate interest in the domain name <ralphlaurenglasses.com>.

Complainant submits that Respondent has no rights to the name or to the mark

RALPH LAUREN. Respondent owns no trademark registrations which are comprised,

in whole or in part, of the mark RALPH LAUREN, nor does he do business

under a 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.

(c) Respondent registered and is using the domain name <ralphlaurenglasses.com>

in bad faith.

Complainant submits that Respondent's bad faith is evidenced by: 1) the fact

that Respondent owns no trademark registrations which include the mark RALPH LAUREN;

2) Respondent does not do business under the name RALPH LAUREN; 3) RALPH

LAUREN is not the name of any individual associated with Respondent; 4) Due

to the fame of the RALPH LAUREN trademark Respondent can hardly allege

that he was unaware that the mark is owned by another entity.

Respondent

The Respondent did not file a Response.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "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".

In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden

of proving three elements:

(i) That the Complainant has rights in a trademark or service mark with

which the Respondent’s Domain Name is identical or confusingly similar;

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

Name; and

(iii) That the Domain Name has been registered and is being used in bad

faith.

6.1 The first issue is whether the Complainant has rights in a trademark

or service mark and whether the domain name in dispute <ralphlaurenglasses.com>

is identical or confusingly similar to that mark.

Complainant is the owner of numerous registered trademarks in the United States

of America in which the name RALPH LAUREN is a distinctive element. Complainant's

marks are very well known with net sales in the year 1999 of 4.2 billion

dollars. Complainant's Trademark Registration No. 1,053,873 for RALPH LAUREN

and Design was registered in association with frames for prescription and non-prescription

lenses and complete sunglasses on December 7, 1976. Complainant's Trademark

Registration No. 1,057,453 for POLO BY RALPH LAUREN for frames for prescription

and non-prescription lenses and complete sunglasses was registered on February 1, 1977.

Complainant also owns Trademark Registration No. 2,175,394 for RALPH for frames

for prescription and non-prescription lenses and complete sunglasses.

The domain name in dispute is <ralphlaurenglasses.com>. Respondent’s

addition of the word "glasses" to the Complainant’s trademark does

not negate confusing similarity with Complainant’s trademark.

The Panel finds that the domain name in dispute is confusingly similar or identical

to Complainant’s trademark.

6.2 The second matter which the Complainant must prove is that the Respondent

has no rights or legitimate interest in the domain name in dispute.

Complainant submits that Respondent has no rights to the name or to the mark

RALPH LAUREN. Respondent owns no trademark registrations which are comprised,

in whole or in part, of the mark RALPH LAUREN, nor does he do business

under a 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 Panel finds that the Respondent has no rights or legitimate interests in

the domain name in dispute.

6.3 The third matter which the Complainant must prove is that the domain

name has been registered and is used in bad faith. The trademarks for or including

RALPH LAUREN are registered in relation to glasses. Net sales of products

in association with a trademark including RALPH LAUREN in 1999 exceeded

4.2 billion dollars. I conclude that the Respondent was aware of the trademarks

for or including RALPH LAUREN at the date of registration of the domain

name <ralphlaurenglasses.com>. The Respondent could not be contacted by

e-mail and the hard copy of the Complaint delivered to the Respondent's address

was returned to the Case Manager. The Respondent did not file a response. The

Respondent does not operate an active website.

The issue is whether the passive holding of a domain name incorporating a very

well known trademark may amount to "the domain name being used in bad faith".

The Panel in Telstra Corporation Limited v Nuclear Marshmallows, WIPO

Case No. D2000-0003 held that passive holding of a confusing domain name

amounts to the Respondent acting in bad faith in particular circumstances. The

circumstances in this case are that the Respondent has adopted a domain name

comprised of a prefix RALPH LAUREN confusing with a very well known trademark

and a suffix "glasses" comprised of goods in association with which the well

known mark is registered. The Respondent has taken steps to conceal itself by

providing an e-mail address and a post office address at which the Respondent

could not be contacted. The Respondent has provided no evidence whatsoever of

any actual or contemplated good faith use by it of the domain name. The Respondent

has failed to activate a website or to provide any evidence that the Respondent

is organizing or plans to organize a website. The above circumstances of the

passive holding of the domain name in this particular case satisfy the requirement

of paragraph 4.(c.).(iii) that the domain name in dispute "is being used in

bad faith" by Respondent.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is confusingly similar

to the trademark to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect

of the domain name; and

(c) The Respondent’s domain name has been registered and is being used in

bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that

the registration of the domain name <ralphlaurenglasses.com> be transferred

to the Complainant.

Ross Carson

Sole Panelist

Dated: June12, 2002

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