WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. Northbay Real Estate, Inc. and John Laxton
Case No. D2006-1394
1. The Parties
The Complainant is PRL USA Holdings, Inc., of New York, New York, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Northbay Real Estate, Inc. and John Laxton, of Santa Rosa, California, United States of America, represented by Larry D. Johnson United States of America.
2. The Domain Name and Registrar
The disputed domain name <rl.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2006. On November 6, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On November 6, 2006, BulkRegister.com 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 November 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2006. The Response was filed with the Center on November 30, 2006.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 22, 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.
By email of December 8, 2006, Complainant transmitted a Statement of Additional Facts to the Center. By email of December 14, 2006, Respondent submitted a Response to Complainant’s Statement of Additional Facts to the Center. Complainant’s supplemental submission addressed facts alleged by Respondent in its Response which Complainant may not have reasonably anticipated. The Panel has therefore decided to accept Complainant’s supplemental submission. Respondent’s supplemental submission briefly addressed Complainant’s new arguments, and the Panel has decided to accept that supplemental submission.
4. Factual Background
Complainant has registered the word trademark “RL” on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. No. 2312818, dated February 1, 2000, in International Classes (ICs) 22, 25 and 39 (covering, inter alia, wearing apparel), and; reg. No. 3120485, dated July 25, 2006, in ICs 9, 21, 23, 26, 36 and 38, covering, inter alia, eyeglasses; and reg. No. 2891892, dated October 5, 2004, in ICs 1, 3, 4, 6, 50, 51 and 52, covering, inter alia, fragrances; as well as word and design marks incorporating “RL”, with designs incorporating flags and armorial symbols (reg. Nos. 2740550, dated July 22, 2003; 2429221, dated February 20, 2001; 2341690, dated April 11, 2000, and; 2718874, dated May 27, 2003). Complainant has registered various other trademarks on the Principal Register of the USPTO in connection with its product lines, including Ralph Lauren, Polo Jeans Co., RL Ralph Lauren, Double RL, RL Girl and RLX. (Complaint, para. 12 & Exhibit 3). Complainant generally asserts but has not provided evidence of trademark registrations outside the United States (id., para. 12).
Complainant asserts that the “RALPH LAUREN Trademarks” are famous in the United States and other countries based on long usage and expenditure of “hundreds of millions of dollars” in advertising and marketing, and that consumers recognize the RALPH LAUREN Trademarks as identifying exclusively Complainant and Complainant’s products. (Id., para. 13)
Complainant has submitted decisions of federal courts in the United States which it asserts recognize that the RALPH LAUREN Trademarks have become a famous and distinctive family of marks throughout the world (id., para. 14). The Panel has reviewed these decisions. They do not address the trademark “RL” standing alone, but rather Complainant’s “Polo”, “Ralph Lauren”, “Polo by Ralph Lauren” and polo player symbol marks. Complainant has neither submitted nor directed the Panel to a US federal court decision recognizing the famous and/or distinctive character of its “RL” mark standing alone.
Complainant has not submitted any evidence of the use of its RL mark in commerce outside its USPTO trademark registrations, nor has it submitted any evidence of consumer recognition of RL, standing alone, as a trademark.
According to the Registrar’s Verification, Respondent Northbay Real Estate, Inc., is the registrant of the disputed domain name <rl.com>, and John Laxton is the administrative, technical and billing contact. According to this Verification, the record of registration was last updated on November 3, 2006. A WHOIS database report dated September 18, 2006, submitted by Complainant, indicates John Laxton as the registrant as of that date, with the record last updated on May 26, 2005. A “Domain History” report with “cache date” of May 18, 2005, shows an unrelated registrant in India.
As of August 9, 2006, the disputed domain name <rl.com> directed Internet users to a home page headed “RL/RL.COM”. The first subheadings under the title of the homepage were “RL” and “Ralph Lauren”. The “Site Menu” then offered links to “Instant Loans”, “Realestate”, Easy Loans, and tenth on a list of 12, “Fashion Design”. Under a subheading “RL” was listed “Cheap Airfare, “Vacations”, “New Cars”, “Car Quotes” and “Jewelry”. (Complaint, Exhibit 5.)
On August 10, 2006, Complainant (through its counsel) transmitted by email and first-class mail a cease and desist and transfer demand to Respondent, referring to its rights in the “RL Trademarks”. By e-mail of August 11, 2006, Respondent replied to Complainant’s counsel indicating that it purchased the disputed domain name to add to its real estate portfolio, that Respondent had not realized that its site, hosted by TRAFFICZ.com, had included any links related to “Ralph Lauren”, and that it had taken steps to assure that “there are no links pertaining to Polo Ralph Lauren or to any other RL trademark holder”. Respondent invited Complainant to contact it if any further problems arose. (Id., Exhibit 6.)
Complainant indicates that subsequent to the email from Respondent, the content of Respondent’s website changed, but indicates that “Internet users can still search Respondent’s website for Complainant’s Products”, and submitted search results showing that a search for Complainant’s products using Respondent’s website search feature would, in fact, find sources for Complainant’s products (id., Exhibit 7.). And, if products of Complainant’s competitors were searched for, those too would be found (id., Exhibit 7).
Respondent has indicated that the transition to a completely new website with search restrictions was somewhat delayed because of processing constraints at its TRAFFICZ.com host. However, it has transmitted copies of its web page dated October 3, 2006, showing the heading as “Realestate Loans/ RL.COM”, with some subheading references to “Gift Baskets” and “Fashion”(Response, Exhibit 7), and its web page dated December 12, 2006, with the same heading, and with all internal references and links limited to loan-related matters (Respondent’s Supplemental Response, Exhibit 2).
Respondent has submitted a number of USPTO TESS Principal Register printouts showing registration of the trademark and/or service mark “RL”, standing alone, to parties other than Respondent, including for use with respect to video cameras, dairy products, bicycles and locksmith services, as well as numerous registrations for RL-formative marks held by third parties. (Response, Exhibit 1)
Respondent has submitted evidence of its domain name registrations for various terms relating to real estate and loans, including <constructionloan.com>, <i-capital.com>, <i-loans.com>, <northbayloans.com> and <loans-direct.com> (Response). <constructionloan.com> was registered by Respondent in June 1997, and <i-capital.com> was registered in July 1997. (Response, Exhibits 2 & 3). In addition, Respondent has submitted evidence of its trademark registrations on the Principal Register of the USPTO for “NORTHBAYLOANS”, reg. No. 2724718, dated June 10, 2003, (through corporation at the same address), and “LOANS-DIRECT.COM, reg. No. 3086077, dated April 25, 2006, (in IC 36, covering “Providing a website featuring information in the field of loans and finance; and providing links to websites of others in the field of loans and finance”), claiming first use in commerce of March 21, 2003. Response, Exhibits 4 & 6)
Respondent is a licensed California Real Estate Broker (License No. 01089105). (Response, para. 8, and Respondent’s Supplemental Response, Exhibit 1)
The Registration Agreement in effect between Respondent and BulkRegister.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it has rights in the trademark “RL”, as well as rights in the “RALPH LAUREN” family of trademarks. Complainant alleges that the RALPH LAUREN family of trademarks is well-known. Complainant argues that the disputed domain name <rl.com> is identical to its RL trademark, and confusingly similar to the RALPH LAUREN trademarks.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent did not register the disputed domain name to make a legitimate use of the name in connection with a real estate loan business, but instead is using the disputed domain name in order to profit from the generation of Internet traffic to Complainant, Complainant’s competitors and unrelated third parties. Complainant argues that the domain names used by Respondent in connection with real estate loans should have the term “loan” in the domain name, which the disputed domain name does not. Complainant argues that it is not relevant whether Respondent is directly profiting from the use of Complainant’s RALPH LAUREN trademarks, because it is acting as agent for third parties. Complainant alleges that because Complainant’s RALPH LAUREN trademark was famous when Respondent registered the disputed domain name, that Respondent was aware of Complainant’s RALPH LAUREN trademarks.
Complainant alleges that Respondent registered and has used disputed domain name in bad faith. Complainant argues that Respondent is using the disputed domain name intentionally to direct Internet users to his website by creating confusion regarding Complainant’s affiliation with his website. Complainant argues that Respondent is profiting from “click throughs” on that website to third parties.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.
Respondent does not dispute that Complainant has rights in the trademark “RL” based on its registration, but indicates that it was not aware of that trademark when it registered the disputed domain name. Respondent contends that Complainant’s rights in the RL mark are not exclusive because a number of third parties have registered RL and RL-formative marks at the USPTO.
Respondent argues that it registered the disputed domain name “RL” as an acronym for “Realestate Loans” following search for domain names that could be used for its pre-existing loan information business. Respondent argues that it is a licensed California real estate broker and has for a substantial period of time operated websites which provide information concerning access to loans. Respondent states that its “constuctionloan.com” website is linked to a bank which permits applications for loans to be filed from the website, and that its other domain names link to that business, among others. Respondent acknowledges that certain of its domain names, including the disputed domain name, have been “parked” with Trafficz.com, and that it profits from click throughs. With respect to <rl.com>, it is in the process of creating a new cobranding and servicing agreement with a bank for real estate loan financing. Respondent argues that it is engaged in a legitimate business with the disputed domain name, and that it registered the name for that purpose. Respondent argues that this is legitimate noncommercial or fair use of the disputed domain name.
Respondent indicates that, upon notice to it of Complainant’s concerns with respect to trademark infringement, it immediately took steps to correct potential problems. Some of the changes were implemented immediately, some took a period of months because of processing lead times with its website host. Respondent states that Complainant did not further contact it after the initial cease and desist and transfer demand, but instead initiated this proceeding under the Policy.
Respondent argues that it did not register the disputed domain name to take advantage of confusion with Complainant’s RL mark, and that it showed its good faith by taking immediate steps to modify its website when contacted by Complainant.
Respondent requests the Panel to reject Complainant’s request to direct the Registrar to transfer the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Complainant and Respondent have each filed initial and supplemental submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has demonstrated rights in the word, and word and design, trademark “RL”, based on evidence of registration at the USPTO and asserted use in commerce (see Factual Background, supra). Respondent does not dispute that Complainant has rights in the RL mark.
The disputed domain name <rl.com> is identical for purposes of the Policy with Complainant’s mark.
The Panel determines that Complainant has rights in the trademark “RL”, and that the disputed domain name <rl.com> is identical to that trademark.
Complainant has also argued that the disputed domain name is confusingly similar to its family of RALPH LAUREN trademarks. Although not expressly stated, the suggestion is that Internet users are sufficiently familiar with the term RALPH LAUREN or other RALPH LAUREN-formative marks that they will associate the initials “RL” with the full RALPH LAUREN name. Complainant has not submitted evidence of such consumer association.
Complainant presumably seeks a determination of confusing similarity with the full RALPH LAUREN mark (or other RALPH LAUREN-formative marks) to support a Panel finding that Respondent registered a famous or well-known mark in its domain name, which might support a finding of lack of rights or legitimate interests, or of bad faith. Complainant has submitted a number of US federal court decisions recognizing that RALPH LAUREN (as well as “POLO” and “POLO BY RALPH LAUREN”) is a famous and distinctive trademark. None of those decisions address the initials “RL” standing alone.
Respondent has submitted evidence of a substantial number of USPTO registrations for the word mark, and word and design mark, “RL” held by parties other than Complainant, as well as evidence of a substantial number of registrations for RL-formative marks held by third parties. This suggests that the letters “RL” (in combination) are in fairly common business usage.
Complainant has not submitted evidence that would support a determination by the Panel that Internet users associate the combination of letters “RL”, standing alone, as an abbreviation for the full term RALPH LAUREN (or other RALPH LAUREN-formative marks), and in that context the Panel declines to find that the disputed domain name <rl.com> is confusingly similar to RALPH LAUREN (or other RALPH LAUREN-formative marks). The Panel thus rejects the suggestion that Complainant’s “RL” mark, standing alone, takes on the characteristics of the famous RALPH LAUREN mark by association.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a 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.” (Policy, paragraph 4(c))
Respondent relies on the grounds of legitimate noncommercial or fair use to establish rights or legitimate interests in the disputed domain name. It argues that it is using the letters “rl” as an acronym for “real estate loans” or “realestate loans”. Respondent is a licensed real estate broker. Respondent has provided substantial evidence of its Internet-related business activity with respect to providing information about commercial loans well prior to registration of the disputed domain name. In essence, Respondent is arguing that it is fairly using the letters “rl” in a descriptive sense, and without intent to take advantage of any association Internet users may have with Complainant and its “RL” mark.
Complainant has noted that Respondent’s “click through” website initially included a direct reference to RALPH LAUREN, in which Complainant holds trademark rights. Complainant therefore contends that Respondent, in fact, intended to take advantage of Complainant’s RL mark by registering and “parking” the disputed domain name, and did not intend to make fair use of the letters “RL” in connection with a real estate loan related website.
Respondent’s substantial evidence of real estate loan related Internet-based business activity prior to registration of the disputed domain name support its argument that it intended to fairly use the term “rl” in connection with directing Internet users to information about real estate loans. The relationship between “rl” and “real estate loans” is indirect. “rl” is not an acronym that a consumer would likely choose in the first instance to identify real estate loans, without prior knowledge of a website or business enterprise. However, this does not mean that “rl” is an illogical or unreasonable choice for the domain name of a website providing information about real estate loans. It is an acronym that sensibly correlates with the field of business, using the first letter of two of the three terms “real estate loans”. Respondent accepts that the association is indirect, but has argued that more direct descriptive associations are already in use by third parties. Respondent does not deny that its present intention is to draw Internet traffic to its website and redirect it to third parties that are in the real estate loan business, but notes also that it is seeking to co-venture with specific lenders in the future.
Evidence cited by Complainant that Respondent attempted to take advantage of Complainant’s “RL” mark is that Respondent’s website initially identified Complainant’s RALPH LAUREN mark. But immediately upon being notified by Complainant of this, Respondent modified its website and, within a reasonably short period of time, is hosting a website that is solely devoted to real estate loans. Internet users seeking Complainant’s RL-marked products will not be confused by Respondent’s website. The Panel does not accept Complainant’s suggestion that only a domain name including the word “loan”, or similar term(s), is appropriate for directing Internet users to a real estate loan-related website. Acronyms, even indirect acronyms, are in wide business usage, including on the Internet.
Complainant has the burden of proving that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel acknowledges that this is a difficult case on the facts. It is not inconceivable that, in registering and using the disputed domain name, Respondent is attempting to take advantage of Complainant’s RL mark. However, the Panel is reluctant to conclude, absent more compelling evidence, that Internet users would draw such a strong association between Complainant’s two-letter mark and the Internet domain name <rl.com> that a heavy burden should be placed on Respondent to demonstrate fair use of two letters in fairly wide commercial usage, and which Respondent claims and supports to be using in a fair descriptive way.
Complainant retains the opportunity to provide more compelling evidence in a court proceeding. Moreover, if Respondent modifies its conduct such that its future use of the disputed domain name ceases to be “fair”, Complainant may be able to initiate another complaint under the Policy. See, e.g., Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2006-0596, for discussion of circumstances in which re-filing of complaints may be appropriate.
On balance, the Panel determines that Respondent is making fair use of the term “rl” in the disputed domain name, and that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name.
Because Complainant has failed to satisfy the second element of the Policy necessary for a finding of abusive domain name registration and use, the Panel will not address the third element relating to “bad faith”.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: January 16, 2007