PRL USA Holdings, Inc. v. Unasi Management Inc.
Case No. D2005-1027
1. The Parties
The Complainant is PRL USA Holdings, Inc., Polo Ralph Lauren Corporation, of New York, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Unasi Management Inc., of Panama.
2. The Domain Names and Registrar
The disputed domain names:
are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2005. On September 30, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On the same date, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 3, 2005.
The Center appointed Ms. Kristiina Harenko as the
Sole Panelist in this matter on November 14, 2005. The Panel finds that it was
properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure
compliance with the Rules, paragraph 7.
4. Factual Background
According to the printouts from the United States Patent and Trademark Office website the Complainant owns numerous valid and subsisting United States Trademark registrations (in addition to many more non-United States trademark registrations) for the marks POLO and RALPH LAUREN and various composite marks including the marks POLO and RALPH LAUREN (collectively the “RALPH LAUREN/POLO Trademarks” or “Complainant’s Trademarks”).
According to the Whois Records of the DotRegistrar.com website, Respondent registered the domain names as follows:
- <ralphlaruen.com>, October 4, 2002
- <ralphlaureen.com>, April 17, 2004
- <ralhlauren.com> and <ralphlaurne.com>, April 27, 2004
- <ralphlaurenfragrances.com> and <ralphlaurenperfumes.com>, December 16, 2004
- <ralphlaurenclothing.com>, December 19, 2004
- <poloralphlaurent.com> and <poloralflauren.com>, December 27, 2004
- <polojackets.com>, January 4, 2005
- <polodresses.com>, <ralphlaurenbags.com>, and <ralphlaurendresses.com>, January 17, 2005
- <ralpjlauren.com>, January 19, 2005
- <poloralphluaren.com>, <poloralphlaruen.com> and <ralphlaurenonline.com>, January 24, 2005
- <poloralphlaurenkids.com>, <polosportshoes.com>, and <ralphlaureneyewear.com>, January 25, 2005
- <ralphauren.com>, <rlphlauren.com>, and <ralohlauren.com>, January 31, 2005
- <poloralphlaurenoutlet.com>, February 7, 2005
- <poloralphlaurn.com>, February 8, 2005
- <ralphlaurem.com>, <ralpglauren.com>, <poloraphlauren.com> and <ralphlairen.com>, February 21, 2005
- <ralphlaurenkidsclothing.com>, February 27, 2005
- <poloralhlauren.com>, February 28, 2005
- <poloralohlauren.com> and <poloralphlairen.com>, March 8, 2005
- <polralphlauren.com> and <ploralphlauren.com>, March 22, 2005
- <poloralphlaure.com> and <poloralphjlauren.com>, April 11, 2005
- <ralphlaurren.com> and <ralpghlauren.com>, April 24, 2005
- <ralphlaurenn.com>, April 29, 2005.
All of the disputed domain names were registered later
than the date when Complainant’s trademarks RALPH LAUREN and POLO had
5. Parties’ Contentions
The Complainant contends that:
It is a leader in the design, marketing and distribution of premium lifestyle products in the categories of, inter alia, apparel, accessories, home and fragrances (“Complainant’s Goods”).
Complainant owns numerous valid and subsisting RALPH LAUREN/POLO Trademarks, many of which have become incontestable, for a broad range of goods and services in the apparel, home furnishings, and lifestyle categories.
The RALPH LAUREN/POLO Trademarks are among the most genuinely famous apparel and lifestyle brands in the world. Complainant has used the RALPH LAUREN/POLO Trademarks in commerce continuously since 1967 for an ever-increasing range of goods and services, and Complainant has expended hundreds of millions of dollars to advertise and market its RALPH LAUREN and POLO products, resulting in sales of billions of dollars’ worth of goods bearing the RALPH LAUREN/POLO Trademarks. Complainant’s long-term, prominent usage of its famous RALPH LAUREN/POLO Trademarks has generated extensive fame and goodwill and widespread consumer recognition for the RALPH LAUREN/POLO Trademarks as identifying exclusively Complainant and Complainant’s Products.
Complainant and its affiliated companies, including its parent, Polo Ralph Lauren Corporation (collectively, “PRL”), are leaders in the design, marketing and distribution of premium lifestyle products in four categories: apparel, home, accessories, and fragrances.
Since 1967, PRL and its predecessors in interest have continuously and extensively used the RALPH LAUREN/POLO Trademarks through extensive advertising and marketing. The RALPH LAUREN/POLO Trademarks have become a famous and distinctive family of marks throughout the world as a symbol of the high quality standards and exclusivity that PRL maintains for its products and related services. Numerous courts in the United States have held so including, Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 1998 U.S. Dist. LEXIS 11735, 7-8 (D. Tex., 1998); Polo Ralph Lauren L.P. v. Schuman, 1998 U.S. Dist. LEXIS 5907 (D. Tex., 1998); Gucci America, Inc. v. Action Activewear, Inc., 759 F. Supp. 1060, 1061 (S.D.N.Y. 1991); Polo Fashions, Inc. v. Fernandez, 655 F. Supp. 664, 668 (D.P.R. 1987); Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 147 (4th Cir. 1987); Polo Fashions, Inc. v. Diebolt, Inc., 634 F. Supp. 786, 788 (D. Kan. 1986); Polo Fashions, Inc. v. Rabanne, 661 F. Supp. 89, 94 (S.D. Fla. 1986); Polo Fashions, Inc. v. Famous Brands, Inc., 1986 U.S. Dist. LEXIS 19412 (D. Kan., 1986); Polo Fashions, Inc. v. The Gordon Group, et al., 627 F. Supp. 878, 887 (M.D.N.C. 1985); Polo Fashions, Inc. v. Clothes Encounters, 1985 U.S. Dist. LEXIS 17838, 227 U.S.P.Q. (BNA) 327, 1985WL 96, (N.D. Ill. 1985); Polo Fashions, Inc. v. Magic Trimmings, Inc., 603 F. Supp. 13, 15 (S.D. Fla. 1984); Polo Fashions, Inc. v. Branded Apparel Merchandising, Inc., 592 F. Supp. 648, 651 (D. Mass. 1984); Polo Fashions, Inc. v. Extra Special Products, Inc., 451 F. Supp. 555, 559-60 (S.D.N.Y. 1978). Copies of these decisions were attached to the Complaint.
PRL has a worldwide presence and, as such, it is the holder of trademark registrations around the world. Included in these worldwide registrations are registrations in Panama as well as Hong Kong and China. A copy of PRL USA’s list of registrations in Panama, Hong Kong and China was attached to the Complaint.
All of the trademark registrations referred to in the Complaint are valid, subsisting, unrevoked and uncancelled. According to Complainant, the registration of these marks constitutes prima facie evidence of their validity and conclusive evidence of Complainant’s exclusive right to use the RALPH LAUREN/POLO Trademarks in commerce in connection with the goods named therein, and commercially related goods. The registration of the RALPH LAUREN/POLO Trademarks also constitutes statutory constructive notice to Respondent of Complainant’s ownership and exclusive rights in the RALPH LAUREN/POLO Trademarks. Such constructive notice is in addition to the actual notice that Respondent most certainly had, given the extensive fame and reputation enjoyed by Complainant’s RALPH LAUREN/POLO Trademarks.
Complainant maintains strict quality control standards for all of its products sold under the RALPH LAUREN/POLO Trademarks (“Complainant’s Products”). All genuine Complainant’s Products are inspected and approved by Complainant prior to distribution and sale. All genuine Complainant’s Products are distributed through Complainant’s worldwide network of authorized dealers.
Complainant has manufactured, marketed, and advertised its products so that the public associates them with the idea of extraordinary design, materials, workmanship, and quality. In furtherance of that goal, Complainant usually displays its products and the associated trademarks in its advertising and promotional materials. To date, Complainant has spent hundreds of millions of dollars in advertising and promoting Complainant’s Products and the RALPH LAUREN/POLO Trademarks, and Complainant and its predecessors-in-interest and affiliated companies have enjoyed billions of dollars in sales of Complainant’s Products.
All of the disputed domain names were registered many years after Complainant’s RALPH LAUREN and POLO marks had achieved worldwide fame and goodwill for Complainant’s Products, including, but not limited to, apparel, home furnishings and fragrances.
Respondent has been exploiting Complainant’s Marks as a way to generate revenue from “click-through” links which Respondent has on their site as well as through clicks on pop-up advertisements. It appears that Respondent is engaged in a common scheme whereby they use the famous RALPH LAUREN and/or POLO name to direct consumers to sites where Respondents are paid a “per click” fee for any link which is used to access the sites connected to the link. Most of Respondent’s domain names actually redirect the user to one of three pages, <ralphlaureen.com>, <ralphlaurenonline.com>, or <poloralphluaren.com> although Respondent does indicate where the user was redirected from at the bottom of the page. Complainant attached a copy of all main pages from each of Respondent’s websites and noted that when the page has been redirected from another page, there is an indication on a subsequent page that the page was redirected. A copy of this page was also included in the Complaint. In addition to the site redirection, once the user is redirected by Respondents to one of the three click through pages they are subjected to a variety of pop-up advertisements. Copies of examples of some of these pop-up advertisements were attached to the Complaint.
Respondent’s domain names are all virtually identical to and confusingly similar to Complainant’s registered RALPH LAUREN and POLO Trademarks. Respondent’s registrations of their domain names fall into two categories. The first category, domain names which use at least one of Complainant’s famous trademarks and a generic word, is used by 13 of the domain names. The domain names using this tactic are <poloralphlaurenoutlet.com>, <poloralphlaurenkids.com>, <ralphlaurenbags.com>, <polosportshoes.com>, <polodresses.com>, <ralphlaurenfragrances.com>, <ralphlaurenclothing.com>, <ralphlaureneyewear.com>, <ralphlaurendresses.com>, <ralphlaurenonline.com>, <ralphlaurenperfumes.com>, <polojackets.com> and <ralphlaurenkidsclothing.com>. The other 27 domain names, <ralphlaurren.com>, <ralphglauren.com>, <ralphlaurenn.com>, <ralphauren.com>, <ralphlairen.com>, <ralohlauren.com>, <ralpglauren.com>, <ralphlaurem.com>, <ralpjlauren.com>, <ralhlauren.com>, <ralphlaruen.com>, <rlphlauren.com>, <ralphlaurne.com>, <poloralphlaurent.com>, <ralphlaureen.com>, <poloralflauren.com>, <poloralphlaruen.com>, <poloralphlaurn.com>, <poloraphlauren.com>, <poloralhlauren.com>, <poloralohlauren.com>, <poloralphlairen.com>, <polralphlauen.com>, <poloralphlaure.com>, <poloralphjlauren.com>, <ploralphlauren.com> and <poloralphluaren.com> all use the standard tactic of misspelling the famous trademark, either by omitting a letter, adding a letter, changing a letter or inversing letters so that when a user mistypes the domain name, they will be directed to the Respondent’s page where they will be given the option of using click through links which may or may not lead to Complainant’s website. This practice is commonly known as “typosquatting”.
Complainant attached a copy of a letter, sent to Mr. J. Lee in Hong Kong and emailed to [email address]@domaincar.com (which is the same email address for Unasi Management Inc.) on February 17, 2005. The letter advised the Respondent of who Complainant was and made several requests, including a request to transfer four domain names to Complainant. Respondent replied via email February 20, 2005 that they would be willing to transfer the domains listed for a $130 “fee”. Complainant initially agreed to pay the “fee” to transfer the domain names, until Respondent informed Complainant of an additional 16 domain names which could also be transferred, each for the same fee. Complainant explained that they expected all 19 of the domain names transferred for $390 on March 22, 2005. On March 25, 2005, Respondent agreed to the transfer of all 19 domain names for $390, but Complainant had discovered the Respondent had continued to register domain names using Complainant’s RALPH LAUREN/POLO Trademarks. Complainant did not answer Respondent’s last email. A copy of this email exchange was attached to the Complaint.
Respondent’s sites have numerous links to other sites selling goods produced by other famous luxury goods retailers, including Armani, BCBG, Christian Dior, Dolce & Gabbana, Fendi, Prada, DKNY, and Versace as well as Complainant’s RALPH LAUREN and POLO products. The Complainant attached to the Complaint an example of some of the pages a user can link to displaying some of Complainant’s competitor’s products.
Respondents, knowing of their continuous infringement of Complainant’s POLO/RALPH LAUREN Trademarks, continued to register domain names which were confusingly similar. Respondent registered the domain names <ralphlaurem.com>, <ralpglauren.com>, <poloraphlauren.com> and <ralphlairen.com> on February 21, 2005, the day after Respondent offered to sell Complainant three of the domain names. To Complainant’s information and belief this is because Respondents engage in a practice known as “Traffic Fishing”. Respondents purchase as many domain names from their registrar for $6.79. Dotregistrar.com offers a service called “free delete feature” which allows the Respondents 72 hours in which to delete the domain names they have registered and receive a refund. This allows Respondents to register a large number of domain names, determine which domain names get sufficient click through revenue to make the registration fee worthwhile. Those domain names which do not receive sufficient click through revenue are returned and no fee is paid for them. Evidence supporting the above was attached to the Complaint.
Complainant alleges that Respondent Unasi Management and J Lee are the same entity. J Lee was the registered owner of many of the disputed domain names listed in this complaint prior to April of this year. Subsequently all these disputed domain names have been transferred from J Lee, who is based in Hong Kong, to Unasi Management, which is based in Panama. Despite this change of name, the original registration dates on the domain names have remained the same, as has the email address. As such it is Complainant’s understanding that J Lee and Respondent Unasi Management are the same entities.
According to Complainant, Respondent should be familiar with the UDRP process.
Respondent, under the name Unasi Management Inc., has been a party to 14 different
UDRP proceedings in 2005. The proceedings include State Farm Mutual Automobile
Insurance Company v. Unasi Management Inc., NAF Case No. 440325; State
Farm Mutual Automobile Insurance Company v. Unasi Management, Inc., NAF
Case No. 441054; State Farm Mutual Automobile Insurance Company v. J Lee,
NAF Case No. 442558; The Neiman Marcus Group, Inc. and NM Nevada Trust v.
Unasi Management Inc., NAF Case No. 448719; Whitney National Bank v.
Unasi Management Inc., NAF Case No. 449357; State Farm Mutual Automobile
Insurance Company v. Unasi Management, Inc., NAF Case No. 449334; State
Farm Mutual Automobile Insurance Company v. Unasi Management Inc., NAF Case
No. 467825; Red Bull GmbH v. Unasi Management Inc., WIPO
Case No. D2005-0304; State Farm Mutual Automobile Insurance Company v.
Unasi Management Inc., NAF Case No. 472028; The Neiman Marcus Group,
Inc. and NM Nevada Trust v. Unasi Management Inc., NAF Case No. 470918;
Deutsche Telekom AG v. Unasi Management Inc., WIPO
Case No. D2005-0423; Members Equity PTY Limited v. Unasi Management Inc.,
WIPO Case No. D2005-0383; Wells Fargo and Company
v. Unasi Management Inc., NAF Case No. 471513; Morgan Stanley v. Unasi
Management Inc., NAF Case No. 471488; and Dermalogica, Inc. and The International
Dermal Institute, Inc. v. Unasi, Inc., NAF Case No. 485936. In each of the
foregoing cases, Complainant received the relief they requested and the disputed
domain name or names were transferred to them. Copies of each of these decisions
were attached to Complaint.
Respondent, as J Lee, has also been the subject of five UDRP proceedings wherein
the circumstances were similar to the present case. . The five cases in 2005
against J Lee are Southern Communication Services, Inc. d/b/a Southern Linc
v. J Lee, WIPO Case No. D2005-0212; State
Farm Mutual Automobile Insurance Company v. J Lee, NAF Case No. 436815;
Oxfam America, Inc. v. J Lee, NAF Case No. 435768; Accor v. J Lee,
WIPO Case No. D2005-0137; and Micro Electronics,
Inc. v. J Lee, WIPO Case No. D2005-0170. In
each of the foregoing cases, the Complainant received the relief they requested
and the disputed domain name(s) were either transferred to them or their registrations
were cancelled. Copies of each of these decisions were attached to Complaint.
(i) Identical or Confusingly Similar
Complainant contends that the domain names currently used by Respondent are
confusingly similar to Complainant’s famous trademarks. Complainant’s
registered trademarks through the United States Patent and Trademark Office
are prima facie evidence of their validity, which creates a rebuttable
presumption that Complainant’s marks are inherently distinctive. Janus
Int’l Holding Co. v. Rademacher, WIPO Case
Many of the Domain Names registered by Respondent simply add a generic word
to Complainant’s famous RALPH LAUREN/POLO trademarks. The additional descriptive
matter in the domain name is not enough to avoid the likelihood of confusion
U-Haul International, Inc. v. Affordable Web Productions, WIPO
Case No. D2003-0511. It is a well-established principle that descriptive
or generic additions, and particularly those which designate the goods or services
with which a mark is used, do not avoid confusing similarity of domain names
and trademarks (as held in, inter alia, Time Warner Entertainment
Company L.P. v. HarperStephens, WIPO Case
No. D2000-1254, concerning over 100 domain names including <harrypotterfilms.net>).
See also, Yahoo! v. Zuccarini, WIPO
Case No. D2000-0777, (where the panel found that the registration and use
of multiple domain names incorporating the distinctive and famous YAHOO!, YAHOOLIGANS!
and GEOCITIES marks, together with generic words such as ‘chat’
and ‘financial’ to be confusingly similar to complainant’s
marks and likely to mislead Internet users into believing the products and services
offered by respondents are being sponsored or endorsed by YAHOO! or GeoCities,
given the similarity of the names and products and services offered). In the
present case, the descriptive elements added to the domain names do not simply
fail to avoid a likelihood of confusion they actually increase it, because they
relate directly to Complainant’s widely known core business in retail
clothing and accessories such as bags and eyewear. It is precisely because of
this association by consumers with Complainant’s marks that Respondents
sought to register the Domain Names.
The other Domain Names are nearly identical to Complainant’s trademarks
but a letter has been changed, added or deleted in an effort to misdirect users
who have accidentally made a typo in their browser bar while typing the domain
name they think will resolve to Complainant’s website. The omission of
a letter, addition of a letter, inversion of a letter or substitution of a letter
is commonly known as typosquatting and does not negate the confusingly similar
aspects of the domain name from Complainant’s marks pursuant to Policy paragraph
4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., WIPO
Case No. D2000-0441 (finding that a domain name which differs by only one
letter from a trademark has a greater tendency to be confusingly similar to
the trademark where the trademark is highly distinctive); see also Victoria’s
Secret v. Zuccarini, NAF Case No. 95762 (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
Complainant submits that the addition of the generic top-level domain “.com”
is irrelevant in determining whether the disputed domain names are confusingly
similar to Complainant’s famous trademarks. See Pomellato S.p.A. v.
Tonetti, WIPO Case No. D2000-0493,
Sony Kabushiki Kaisha v. Inja, Kil, WIPO
Case No. D2000-1409.
(ii) Rights or Legitimate Interests
According to Complainant, Respondent cannot demonstrate any legitimate interest in the Domain Names. Respondent registered the Domain Names only after Complainant had established rights in its RALPH LAUREN/POLO trademarks. Moreover, Respondent has no business name that is in any way similar to Complainant’s Trademarks, and Respondent specifically choose its Domain Names as a way of linking to sites that sell both real and potentially counterfeit goods under the Complainant’s Famous Marks.
Where, as here, Complainant’s marks and name are so well-known and so
widely recognized, and have been used in connection with apparel, home decor,
fragrances and other products for so many years, there can be no legitimate
use by Respondent. For instance in Nike Inc. v. B.B. de Boer, WIPO
Case No. D2000-1397, the panel concluded that the respondent had no legitimate
rights noting that it was difficult to see how the respondent could not have
known about the trademark NIKE. See also, Victoria’s Secret, et. al
v. Atchinson Investments Ltd., NAF Case No. 96496 (finding respondent could
not have been unaware that VICTORIA’S SECRET was a famous mark and thus
did not have a legitimate right to register a domain name using the mark).
More importantly, each of the domain names registered by Respondent forwards
the user to a page with click through links, mostly unrelated to Respondent.
Respondent’s use of domain names, which are confusingly similar to Complainant’s
Trademarks, to redirect internet users interested in Complainant’s goods
to sites that offer links to competing websites is not a use in connection with
a bona fide offering of goods and services pursuant to Policy paragraph
4(c)(i), nor a legitimate noncommercial or fair user pursuant to Policy paragraph 4(c)(iii).
See Pioneer Hi-Bred Int’l Inc. v. Chan, NAF Case No. 154119 (finding
that respondent did not have rights or legitimate interests in a domain name
that used complainant’s mark and redirected Internet users to a website
that pays domain name registrants for referring those users to its search engine
and pop-up advertisements); see also, eBay Inc. v. Sunho Hong, WIPO
Case No. D2000-1633 (stating that the “use of complainant’s
entire mark in infringing domain names makes it difficult to infer a legitimate
Furthermore, Complainant argues that there exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the Domain Names, which incorporate in their entirety and are confusingly similar to Complainant’s marks. Respondent is not commonly known by the Domain Names and are not making a legitimate noncommercial or fair use of them. Indeed, Respondent is not making and never has made any use of the Domain Names apart from associating them with websites where users may click on links (and thereby provide Respondent revenue) to forward themselves to websites, many of which sell goods in direct competition with Complainant’s goods.
(iii) Registered and Used in Bad Faith
Complainant submits that Respondent’s actions evidence bad faith use
and registration of the Domain Names under paragraph 4(b)(iv) of the Policy,
because it is using the Domain Names to intentionally attempt to attract, for
commercial gain, internet users to its websites or other online locations, by
creating a likelihood of confusion with Complainant’s Marks as to the
source, sponsorship, affiliation, or endorsement of its websites. See Barnes
& Noble College Bookstores, Inc. v. Leasure Interactive, WIPO
Case No. D2001-1216, (“it is more probable than not that Respondent
in registering the disputed domain name, was motivated by a desire to benefit
from the widespread reputation of the BARNES & NOBLE marks. That being the
case, Respondent cannot be found to have used the domain name in connection
with a bona fide offering of goods and services.”)
Respondent must have registered the Domain Names in bad faith. Guerlain
S.A. v. PeiKang, WIPO Case No. D2000-0055;
Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co,
WIPO Case No. D2000-0163 (“The domain
name is so obviously connected with such a well-known product that its very
use by someone with no connection with the product suggests opportunistic bad faith.”)
Bad faith can also be found by the Respondent’s use of the Complainant’s
famous marks in promoting their misdirecting business. As shown above, Complainant
has many registrations for their marks in the U.S. Clearly, Respondent knew
of the fame of Complainant’s Marks when it registered the Domain Names
and under United States trademark law, Respondent is deemed to have been on
actual notice of Complainant’s rights in their marks before it registered
the Domain Names and then used them for improper purposes. Given this awareness,
it is evident that the registration and use of the Domain Names were in bad
faith. See Cellular One Group v. Paul Bryan, WIPO
Case No. D2000-0028; Chanel, Inc. v. Cologne Zone, WIPO
Case No. D2000-1809. The fact that Respondent proceeded with the registration
of the Domain Names that incorporate Complainant’s Marks in their entirety
and are confusingly similar to them supports a finding of registration and use
in bad faith. Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO
Case No. D2000-0140. See also, Chanel, Inc. v. Designer Exposure,
WIPO Case No. D2000-1832.
Respondent’s multiple registrations of domain names incorporating different versions of Complainant’s trademarks demonstrate Respondent’s intent to register confusingly similar domain names for the purpose of disrupting Complainant’s business. Registration of domain names confusingly similar to Complainant’s trademarks for the purpose of disrupting Complainant’s business is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Massaging, NAF Case No. 96102 (concluding that domain names were registered and used in bad faith where respondent and complainant were in the same line of business in the same market area); see also, S. Exposure v. S. Exposure, Inc., NAF Case No. 94864 (finding that respondent acted in bad faith by attracting internet users with a website the competes with complainant’s business).
Respondent’s offer to sell the domain names at an inflated price is also
evidence of its bad faith under the policy. Many decisions have held that offering
to sell a disputed domain name at prices in excess of the registration fee is
evidence of respondent’s bad faith. See World Wrestling Fed’n
Entmt., Inc. v. Bosman, WIPO Case No. D1999-0001
(finding that respondent used the domain name in bad faith because he offered
to sell the domain name for valuable consideration in excess of any out of pocket
costs); see also, America Online, Inc. v. Avrasya Yayincilik Danismanlik
Ltd., NAF Case No. 93679 (finding bad faith where respondent offered domain
names for sale); Little Six, Inc v. Domain For Sale, NAF Case No. 96967
(finding that respondent’s offer to sell the domain name at issue to complainant
was evidence of bad faith). In the pending matter, Respondent made it clear
that it would be happy to sell many of the Domain Names at a significantly inflated
Respondent continued, even after being advised of Complainant’s objections, to register domain names which are confusingly similar to Complainant’s Trademarks. Complainant finds that this is simply additional evidence of Respondent’s bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainant must convince the Panel on the following three criteria:
(i) the domain name is identical or confusingly similar to a trademark in which it holds rights; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name was registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “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 view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
(i) Identical or Confusingly Similar
The Panel concludes that Complainant, as registered proprietor of RALPH LAUREN/POLO Trademarks, has established rights in trademarks, sufficient for the purposes of paragraph 4(a) of the Rules. There is no doubt that there is confusing similarity between Complainant’s RALPH/LAUREN trademarks and the disputed domain names. There is no reason to depart from the precedents cited by the Complainant in its Complaint on that issue.
(ii) Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
Respondent is in default and thus has made no affirmative attempt to show rights and legitimate interests in the disputed domain names. The arguments by Complainant, as summarized hereinabove under 5A(ii), supported by means of proof submitted by Complainant, have convinced the Panel that Respondent has not had, nor has, any rights or legitimate interests in respect of the disputed domain names.
(iii) Registered and Used in Bad Faith
For the purposes of determining if the bad faith element is present, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The circumstances of paragraph 4(b) of the Policy involve possible bad faith motives of: (i) selling, renting or otherwise transferring the domain name for valuable consideration, (ii) preventing the trademark owner from having its trademark as a domain name provided there is a pattern of such conduct, (iii) disrupting the business of a competitor or (iv) attracting Internet users to a website for commercial gain by creating confusion with the complainant’s trademark.
The Panel notes that the use of misspellings in domain names alone indicates bad faith registration. In this case, the last of the above bad faith motives is apparent, that is, attracting Internet users to a website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its websites. The Panel also notes that the disputed domain names are so obviously connected with such well-known products that the very use of such domain names by someone with no connection with the products suggests opportunistic bad faith. Furthermore, the Panel finds that bad faith can also be found by Respondent’s use of Complainant’s famous trademarks in promoting Respondent’s business.
Complainant has convinced the Panel that Respondent knew of the fame of Complainant’s trademarks when it registered the disputed domain names. Respondent is deemed to have been on actual notice of Complainant’s rights in their trademarks before Respondent registered the disputed domain names and then used them for improper purposes. Given this awareness, the Panel finds that the registration and use of the disputed domain names were in bad faith.
The Panel finds that the multiple registrations of domain names incorporating different versions of Complainant’s trademarks demonstrate Respondent’s intent to register confusingly similar domain names for the purpose of disrupting Complainant’s business. Registration of domain names confusingly similar to Complainant’s trademark for the purpose of disrupting Complainant’s business is evidence of bad faith registration and use pursuant to Policy 4(b)(iii).
Finally, the lack of a response to this Complaint infers that Respondent could not demonstrate any good faith use of the domain name.
In view of the evidence provided and the precedent found in similar cases,
the Panel finds that Respondent registered and used the disputed domain names
in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names
be transferred to the Complainant.
Dated: November 28, 2005