all of which are registered in the United States Patent and Trademark Office.

4.3 Complainant has advertised its POLO marks extensively and has reaped substantial sales for goods bearing the POLO marks.

4.4 Complainant’s POLO marks, by virtue of its advertising and marketing, have been recognized by courts in the United States as being famous and distinctive; see, for example, West Chester Media Company L.P., et al. v. PRL USA Holdings, Inc., et al., 1998 U.S. Dist., Lexis 11735.

4.5 Respondent operates an on-line store website.

4.6 Respondent registered the disputed domain name on or about January 24, 2004.

4.7 Complainant’s counsel sent a demand letter to Respondent on July 26, 2005, informing Respondent that use of the disputed domain name was leading to acts of trademark infringement and demanding that the website be closed and the disputed domain transferred to Complainant. On July 29, 2005 Respondent’s attorney wrote to Complainant stating that images taken from Complainant’s website had been removed from Respondent’s website and that Respondent would post a disclaimer in its website to the effect that it was not associated, affiliated, or employed by Complainant.

4.8 Complainant’s counsel again wrote to Respondent and stated that absent any authorization from Complainant, selling goods known by a famous trademark does not grant Respondent the right to use the trademark in a domain name. Respondent did not respond to this letter.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that the disputed domain name is identical to Complainant’s POLO USA trademark (omitting only the space between POLO and USA; and, of course, adding the “.com” suffix) and confusingly similar to Complainant’s other POLO trademarks.

5.2 Complainant contends that Respondent cannot demonstrate any legitimate interest in the disputed domain name by virtue of Complainant’s well known and widely recognized trademarks.

5.3 Complainant further contends that no relationship exists between Complainant and Respondent that would give rise to any license, permission, or authorization allowing Respondent to use Complainant’s trademarks in any domain name.

5.4 Complainant contends that it sells its POLO apparel only through authorized distributors and that Respondent is a reseller of Complainant’s products, and also sells (or re-sells) products from other manufacturers.

5.5 Complainant contends that a reseller of trademarked goods does not confer any right on the reseller to use the trademark in a domain name, particularly so when the fame of the mark is well known to Respondent.

5.6 Complainant contends that Respondent’s use of the disputed domain name satisfies Paragraph 4(b)(iv) of the Policy. Complainant further contends that the disputed domain name is so obviously connected to well known products that use of the disputed domain name by someone with no connection with the product suggests opportunistic bad faith.

5.7 Complainant further contends that registration and use of the disputed domain name is demonstrated by selling products not related to Complainant’s POLO marks, and by registering a domain name that incorporates a well known trademark, and that Respondent’s sole interest in the disputed domain name is to profit from the sales of counterfeit merchandise branded with Complainant’s famous marks.

5.8 Complainant requests that the disputed domain name by transferred to Complainant.

B. Respondent

5.9 Respondent contends that it sells authentic, genuine POLO apparel purchased from Complainant’s official website, authorized distributions of POLO apparel, and from certain stores in California that, although not authorized distributors of POLO apparel, nevertheless sell POLO apparel.

5.10 Respondent contends that its website is almost exclusively in the Korean language and targets Korean consumers living in South Korea – a market to which Complainant has never shipped goods from its official website.

5.11 Respondent contends that a disclaimer is posted prominently on top of Respondent’s website to the effect that the website has no business relationship with Complainant. The disclaimer is in Korean.

5.12 Respondent contends that it does not compete with Complainant’s official website because Respondent sells POLO apparel exclusively to Internet consumers living in South Korea.

5.13 Respondent contends that it has a legitimate interest in the disputed domain name because it has always offered genuine, authentic POLO goods for sale in connection with the website to which the disputed domain name resolves. Respondent further contends that Complainant offers no evidence to the effect that Respondent is selling counterfeit goods, and that Respondent is offering bona fide POLO goods through its website. Respondent further contends that trademark law does not apply to the sale of genuine goods bearing a true mark, even if the sale is without the mark owner’s consent. Respondent further contends that a reseller of bona fide goods can have a legitimate interest in a domain name bearing the mark of another, citing Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thornton d/b/a Machines & More, WIPO Case No. D2000-0006; and NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903.

5.14 Respondent contends that Complainant has not proved that the disputed domain name was both registered and is being used in bad faith, that bad faith registration is an insufficient ground for obtaining Complainant’s desired remedy, and that a profit motive is insufficient for establishing bad faith use.

6. Discussion and Findings

6.1 Neither the Rules nor the Policy allow for unsolicited submissions. Paragraph 12 of the Rules states that “the Panel may request, in its sole discretion, further statements…from either of the Parties.” The Panel has not made any such request regarding this proceeding. Rather, the Panel agrees with the Panel in Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596 that supplementary submissions should be allowed only in exceptional cases, and only when the party making such a submission explains why the material in the submission could not have been submitted with the Complaint (or Response).

6.2 The Rules and Policy are designed for effective and expedient resolution of domain name disputes. Additional filings, other than those requested by the Panel undermine the expediency of the proceedings. In this case, the Panel finds that sufficient allegations and evidence are contained in the Complaint and Response for resolution of this dispute. Accordingly, Complainant’s unsolicited submission is rejected and will play no part in the resolution of this dispute.

6.3 The Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

6.4 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element in Paragraph 6.3.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.5 The disputed domain name differs from one of Complainant’s marks only by the omission of the space between Polo and Usa and, of course, the “.com” suffix. The latter is of no significance as all domain names must convey a gTLD suffix. Neither is the former of significance, see Tarjeta Naranja S.A v. MrDominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295. The disputed domain name differs from another of Complainant’s marks by the addition of “USA”. The “USA” is a clear suggestion of a geographic area and, as such, is insufficient to distinguish the disputed domain name from Complainant’s mark. See Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658. Therefore, the Panel finds that the disputed domain name is virtually identical to one of Complainant’s marks and confusingly similar to another of Complainant’s marks.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.6 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name.

6.7 Complainant has asserted that Respondent has no legitimate interest in the Domain Name and especially that Complainant has not authorized Respondent to use Complainant’s mark. This is sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests by Respondent. Thus, the evidentiary burden shifts to Respondent to show evidence that it has rights or legitimate interests in the disputed domain name; see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.8 Respondent has not shown that it was commonly known by the disputed domain name, and Respondent’s use of the name is certainly for profit. Respondent relies, for the most part, on the cases mentioned in Paragraph 5.13 above, to show that its use of the disputed domain is fair use. The area of fair use is fraught with difficulty and has been hotly contested in UDRP decisions. In NCAA v. Randy Pitkin, et al. WIPO Case No. D2000-0903, the Panel, over a dissent, found that Respondent’s use of the domain name <finalfourseats.com> was a fair use of Complainant’s trademark FINALFOUR because the domain name guided the Internet user to a website that was interested only in selling seats to the NCAA final four championship games rather than being interested in the NCAA or the final four teams, per se. The dissent stated:

“The Internet user searching for information regarding Complainant’s events are drawn to Respondent’s website through initial interest confusion…and that even where people realize, immediately, upon accessing the complained of website, that they have reached a site operated by someone other than the trademark owner, the impinging website will have gained a customer by appropriating the goodwill of the trademark owner.”

6.9 Indeed, a contrary result, also over a dissent, was reached in The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc./Front and Center Entertainment, WIPO Case No. D2004-0947 regarding the domain name <orangebowltickets.net>. There, the dissent argued that the reasoning in NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903 should control the outcome of the case.

6.10 There is no doubt that Respondent in this case, having registered a virtually identical domain name as well as a domain name that is confusingly similar to marks held by Complainant, is appropriating the goodwill of Complainant. Further, there is no guidance in this case regarding the disputed domain name for the Internet user only interested in seats to the NCAA’s final four games as existed in NCAA v. Randy Pitkin,et al., WIPO Case No. D2000-0903.

6.11 Respondent also relies on Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 where a reseller (an authorized dealer of Oki Data parts) could have a legitimate interest in the mark of another if the following four criteria were satisfied by the reseller:

(i) Respondent must use the site to sell only the trademarked goods;

(ii) the site must accurately disclose the registrant’s relationship with the trademark owner;

(iii) Respondent must actually be offering the goods or services at issue; and

(iv) Respondent must not try to corner the market in all domain names and thereby deprive the trademark owner from reflecting its own mark in a domain name.

6.12 The facts in this case clearly show that Respondent did not satisfy items (i) and (ii), above. Thus, Respondent admits that it sells goods of others on the website, and as of the time of Complainant’s first letter to Respondent, there was no disclaimer of any kind on Respondent’s website. See Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 involving the addition of a disclaimer upon receipt of a complaint.

6.13 Respondents contend that they never sell more than 10-15% of goods of others on the website. This amount of sales is not great but neither is it insignificant.

6.14 The last case relied upon by Respondent, Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thornton, d/b/a Machines & More, WIPO Case No. D2000-0006 was decided for Respondent on the basis of unexplained, significant factual issues including an initial positive response to the registration of the domain name by Respondent, and Respondent’s belief that it was a “stocking distributor” for complainant. The learned Panelist opined that acquiescence and fair use were essentially issues for the courts. There is no acquiescence by Complainant in these proceedings, and the concept of fair use, if adopted here, would make a mockery of trademark rights.

6.15 We note also that the majority view expressed in the WIPO Overview on Panel Views on Selected UDRP Questions follows the Oki Data decision while the minority view holds that without the express permission of the trademark holder the right to resell the trademark holders products does not create the right to use the trademark as the basis of a domain name.

6.16 We find that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy

6.17 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a disputed domain name.

6.18 Clearly, Respondent had actual knowledge of the POLO trademark. Respondent purchased goods from that website. Also, the Overview supports the proposition that when a Complainant has a United States trademark and Respondent is located in the United States, constructive notice may be employed to presume that Respondent had notice of the trademark, see the Overview, Paragraph 3.4, and cases cite therein.

6.19 Regarding use of the disputed domain name, the evidence presented by Respondent shows that Respondent is selling authentic goods obtained from others, including Complainant’s website. And while Complainant contends that its products are sold only through authorized dealers, the evidence presented by Respondent that unauthorized dealers also sell Complainant’s products is not conclusive. The unauthorized dealers may be obtaining the products in the same fashion as Respondent, either from Complainant or from Complainant’s authorized dealers.

6.20 Respondent argues that the disputed domain name is aimed at Korean speakers and that Complainant does not ship goods to customers in Korea from its on-line store nor does it have an on-line store using the Korean language. The Panel notes, however, that South Korea is a heavily industrialized country and its citizens, as well as others fluent in the Korean language, reside in many different countries. If anything is certain, it is that the effect of a domain name is felt not only in the country where the registrant resides, or in any other particular country, or where the registrant does business, but because of the Internet, the effect is felt throughout the world. See Skipton Building Society v. Peter Colman, WIPO Case No. D2000-1217.

6.21 This Panel believes that Respondent by registering the disputed domain, essentially identical to one of Complainant’s marks, is intentionally attempting to attract Internet users to its website, for Respondent’s pecuniary gain, by creating a likelihood of confusion with Complainant’s POLO marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Indeed it is difficult to imagine a use of Complainant’s marks, given their distinction and famous nature, that would not suggest an affiliation of some sort with Complainant. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil, WIPO Case No. D2000-1409.

6.22 At the very least, Respondent’s website creates an initial interest confusion that smacks of opportunistic bad faith. At least among those fluent in Korean, they will have reached a site operated by someone other than the trademark owner, and Respondent’s website will have gained a customer by appropriating the goodwill of the trademark owner.

6.23 For these reasons, the evidence and arguments presented in these proceedings, show that Respondent registered and is using the disputed domain name in bad faith.

7. Decision

7.1 For all the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name <polousa.com> be transferred to Complainant.

Jay Simon Presiding Panelist
Thomas L. Creel Panelist	Edward Chiasson Panelist

Dated: April 20, 2006

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0093.html

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