WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. LucasCobb
Case No. D2006-0162
1. The Parties
The Complainant is PRL USA Holdings, Inc., New York, New York, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is LucasCobb, Newport Beach, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ralphlaurenpants.com> (the “Domain Name”) is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2006. On February 7, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name(s) at issue. On February 8, 2006, Schlund + Partner transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2006.
The Center appointed Michelle Brownlee as the sole panelist in this matter on March 16, 2006. 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
Complainant has used the RALPH LAUREN trademark since 1967, for apparel, home furnishings and other goods. Complainant owns numerous registrations for the RALPH LAUREN trademark and other trademarks that incorporate the words RALPH LAUREN in the United States and throughout the world.
5. Parties’ Contentions
Complainant has spent hundreds of millions of dollars to advertise its RALPH LAUREN and POLO trademarks, and has sold billions of dollars in goods bearing the RALPH LAUREN mark. The RALPH LAUREN mark is a famous mark, as recognized by numerous United States court decisions.
Respondent registered the Domain Name on or about June 18, 2005. Respondent has been exploiting the RALPH LAUREN trademark by using the Domain Name to generate click-through revenue from links on Respondent’s web site. Respondent’s web site provides a link to Complainant’s official web site under a heading “Sponsored Links,” which implies that Complainant has sponsored the link, which is not the case.
Complainant sent a cease and desist letter to Respondent on October 27, 2005, requesting transfer of the domain name and received no response. Complainant sent a second letter on November 28, 2005, and again received no response.
Complainant contends that the Domain Name is confusingly similar to Complainant’s RALPH LAUREN trademark, that the Respondent has no right or legitimate interest in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name is identical to Complainant’s trademark and domain name except for the addition of the hyphen and the word “pants.” Pairing of Complainant’s famous trademark with the generic word “pants” is likely to lead Internet users to believe that the Domain Name is a site affiliated with Complainant. Other panels have found confusing similarity under similar circumstances. See, e.g., Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer (WIPO Case No. D2001-0032, March 28, 2001).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue
Respondent has not provided any evidence of rights or legitimate interest in the Domain Name. Respondent does not appear to be known by “Ralph Lauren Pants” and his use of the Domain Name to point to other sites in order to collect referral fees cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use. See Fresh Intellectual Properties, Inc. v. Matt Braska (WIPO Case No. D2005-0096, March 28, 2001). Accordingly, the Panel finds that Respondent does not have any right or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
Complainant has established bad faith under Paragraph 4(b)(iv) of the Policy. Respondent’s use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered 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 Name <ralphlaurenpants.com> be transferred to the Complainant.
Dated: March 20, 2006