WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. Search Hound
Case No. DBIZ2001-00010
1. The Parties
The Complainant is PRL USA Holdings, Inc., a corporation organized and existing under the laws of the State of Delaware, having its principal place of business at 103 Foulk Road, Suite 25, Wilmington, Delaware, United States of America.
The Respondent is Search Hound, an entity with a mailing address at 200 Main Street, Suite #305, Kansas City, Missouri, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <lauren.biz>, which domain name is registered with eNom, Inc., having its principal place of business at Redmond, Washington, United States of America ("eNom").
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 7, 2001, in electronic format and on December 11, 2001, in hard copy. The Complainant has standing to file such a Complaint, as Complainant timely filed the required Intellectual Property (IP) Claim Form with the registry operator, NeuLevel. As an IP Claimant, Complainant noted its intent to file a STOP Complaint against Respondent.
The WIPO Center verified that the Complaint satisfied the formal Requirements of the Start-up Trademark Opposition Policy for .biz, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP), the Rules for Start-up Trademark Opposition Policy for .biz, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the WIPO Supplemental STOP 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 STOP, the STOP Rules, and the WIPO Supplemental STOP Rules. The required Panel fees were paid on time and in the required amount by Complainant.
No deficiencies having been recorded, on December 21, 2001, a Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with Copies to the Complainant, eNom, and ICANN), setting a deadline of January 10, 2002, by which the Respondent could file a Response to the Complainant. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in eNom's records. It was also transmitted to William Head, an intervenor and alleged owner of the registration of the domain name at issue. 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 STOP Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, email communications received from Respondent and Respondent's Intervenor clearly indicate that effective service was made.
On January 10, 2002, the day on which the Response was due, a representative of Respondent sent the WIPO Center an email, indicating that Respondent had been acting as an agent for one William Head when it registered the domain name at issue, and that Respondent had attempted unsuccessfully to have the domain name registration transferred to William Head.
On December 18, 2001, the WIPO Center received an email from William C. Head, a lawyer in Atlanta, Georgia, United States of America, in which Mr. Head claimed the rights to the registration of the domain name at issue. Mr. Head alleged that he had registered <lauren.biz> for his eight-year old daughter, Lauren. Mr. Head promised to fight for the right to the name. However, neither at this time, nor at any other did Mr. Head, an attorney, ever submit a Response which satisfied the requirements of the STOP Policy, the STOP Rules, or the WIPO Supplemental STOP Rules.
On December 20, 2001, the WIPO Center received another email from Mr. Head, indicating that his daughter emulated Britney Spears and hoped one day to go into show business. Mr. Head referenced, but did not enclose, a video of his daughter performing at a local school in Atlanta. Mr. Head indicated a willingness to furnish signed documentation that his daughter would never compete with Complainant.
On January 15, 2002, three days after the time had expired in which to file a formal Response, Mr. Head sent the WIPO Center another email, in which he contended that the wrong party had been named as a Respondent. Mr. Head asked that the Complaint be refiled so that Mr. Head could respond.
On January 14, 2002, not having received a formal Response, the WIPO Center sent the Respondent, with a copy to Mr. Head, a Notification of Respondent Default.
On January 30, 2002, having received his Statement of Acceptance and Declaration of Impartiality, the WIPO Center appointed M. Scott Donahey to serve as Panelist in this matter and forwarded to the parties and to Mr. Head a Notification of Appointment of Panel.
4. Factual Background
Complainant is the holder of several trademarks for LAUREN and RALPH LAUREN. Complainant's first trademark for LAUREN dates to May 31, 1988. Complaint, Annex C(3). Complainant's first trademark for RALPH LAUREN dates to May 14, 1974. Complaint, Annex C(5). Among Complainant's other marks is one for LAUREN RALPH LAUREN that dates to March 18, 1997. Complaint, Annex C(13).
Complainant's principal is a world-renowned designer. In fiscal year 2001, products bearing Complainant's trademarks had worldwide wholesale net sales of more than US$4.7 billion. In the same period, more than US$55 million was spent in advertising such products.
Respondent has produced no evidence that it has registered the name "Lauren" as a mark, nor that it is known as the mark. Respondent has produced no concrete evidence that Respondent acted as Mr. Head's agent.
Mr. Head has made various assertions, previously discussed, but has offered no concrete evidence in the form of affidavits or documents in support of such assertions.
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical to Complainant's LAUREN mark and confusingly similar to Complainant's RALPH LAUREN mark. Complainant contends that Respondent has no right or legitimate interest in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent contends that it acted as the agent for William Head in the registration of the domain name and that it has tried unsuccessfully to modify the registration to reflect Mr. Head's ownership of the domain name.
Mr. Head argues that he is the owner of the domain name at issue and as such should be named as Respondent. Mr. Head asserts that he has rights and legitimate interests in respect of the domain name in that he registered the name for his eight-year-old daughter whose name is Lauren for possible use in some future business, perhaps involving music. Mr. Head argues that the name was registered in good faith.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is 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."
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an IP Claim Form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
The STOP Rules define a Respondent as "the holder of a domain name registration against which a complaint is initiated." STOP Rules, Rule 1. The Rules clearly provide that the Complainant is to look to the Whois database to determine the proper party Respondent. See, e.g., STOP Rules, Rule3(c)(v). The Provider is also required to look to the Whois database for contact details for the Respondent. STOP Rules, Rule 4(a).
Accordingly, the Respondent identified in the Complaint is the proper party respondent. Panels cannot be expected to conduct an inquiry into the proper owner of the registration. It is for the registrant and any transferee to see that the Registrar and Whois update their records to reflect any transfer. For whatever reason this has not been done.
Mr. Head, the purported owner of the registration, is by his own admission an attorney at law. It must therefore be presumed that Mr. Head knows and appreciates the importance of presenting competent evidence in support of allegations and of following the rules and procedures set out for the resolution of disputes. Yet neither Respondent nor Mr. Head have produced competent evidence or followed such procedures. No formal response with the required certification was ever submitted. STOP Rules, Rule 5(c)(vi). No annexes of documentary or other evidence on which the Respondent or Mr. Head relies was ever submitted. STOP Rules, Rule 5(c)(vii).
Complainant's Rights in the Mark
Complainant has rights in the mark LAUREN as demonstrated by its registered trademarks.
Rights or Legitimate Interests in Respect of the Domain Name at Issue
Respondent makes no assertion of rights or legitimate interests in respect of the domain name at issue. Mr. Head asserts rights on the basis of the name of his eight-year-old daughter who may one day use the domain name at issue in conjunction with a legitimate business.
This Panel addressed the burden of proof issue relative to the issue of rights and legitimate interests in the context of the UDRP. The Panel believes that analysis is equally applicable to the question in the context of the STOP Policy. When a Complainant asserts that a Respondent has no rights or legitimate interests in respect of a domain name, it is incumbent upon the Respondent to produce "concrete evidence" of such rights and interests. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. "'Concrete evidence' constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the Panel require that a respondent come forward with concrete evidence that the assertions made in the response are true." Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, at ¶ 6.12. "Evidence in the form of documents or third party declarations should be furnished in support of such assertions." Id., at ¶ 6/14. "Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant's assertions." Id., at ¶ 6.15.
Accordingly, the Panel finds that Respondent (or Mr. Head) has no rights or legitimate interests in respect of the domain name at issue.
Bad Faith Registration or Bad Faith Use
Under the STOP Policy, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. Here, as in most cases likely to be brought under the STOP Policy, there has been no use. The question arises, how is the Complainant to show bad faith registration.
The STOP Policy was adopted to permit claimants of intellectual property rights in a name to recover domain names which are identical to the mark from a registrant who has no similar intellectual property rights in that name. In determining whether registration has been done in bad faith, the STOP Policy has varied the language of one of the examples of bad faith under the UDRP. Under the UDRP, one of the examples of bad faith is where "[the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct." UDRP, ¶ 4(b)(ii). The italicized portion of the UDRP requirement has been omitted from the similar STOP provision. STOP Policy, ¶ 4(b)(ii). But how is the Complainant to prove that the Respondent has registered the domain name in order to prevent the owner of the mark from reflecting that mark in a .biz domain name? The requirement seems to suggest that Complainant has the burden of proving Respondent's state of mind. The Panel believes that this could not have been the intent of the provision.
This Panel believes that unless the Respondent can show, by concrete evidence, for example, (1) that the second level domain name is a generally descriptive term, or (2) that Respondent has an intellectual property right in the second level domain name, or (3) that Respondent was using, or preparing to use the domain name at issue in connection with a bona fide offering of goods or services prior to the filing of the IP Complaint, or (4) that Respondent is commonly known by the second level domain name, then there is a rebuttable presumption that Respondent has registered the domain name at issue in bad faith.
In this case, a rebuttable presumption that Respondent registered the domain name at issue in bad faith arises, and Respondent (or Mr. Head) has failed to rebut that presumption.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered the domain name in bad faith. Accordingly, pursuant to Paragraph 4(i) of the STOP Policy, the Panel requires that the registration of the domain name <lauren.biz> be transferred to the Complainant.
M. Scott Donahey
Dated: February 13, 2002