WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. vivienne westwood / Contact Privacy Inc. Customer 0126347680
Case No. D2011-1292
1. The Parties
Complainant is PRL USA Holdings, Inc. of Delaware, United States of America, represented by Greenberg Traurig, LLP, United States of America.
Respondent is vivienne westwood of Fuzhou, China; Contact Privacy Inc. Customer 0126347680 of Toronto, Canada.
2. The Domain Name and Registrar
The disputed domain name is <ralphlaurenpaint.net> which is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2011. On July 28, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 28, 2011, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 1, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 2, 2011.
The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on August 31, 2011. This Panel finds that it was properly constituted. This 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.
On September 7, 2011 the Center transmitted by email to Complainant Procedural Order No. 1 whereby this Panel requested Complainant to file the corresponding documents evidencing that Complainant owns (or otherwise has rights over) the trademark registrations attached as Exhibit C to the Complaint. On the same day, Complainant filed with the Center its reply to Procedural Order No. 1.
4. Factual Background
Complainant is a corporation from Delaware, United States of America, engaged in the design, marketing and distribution of premium lifestyle products
Complainant has rights over the RALPH LAUREN trademark, for which it holds several trademark registrations: registration No. 1624989 with the United States Patent and Trademark Office (USPTO), registered on November 27, 1990, class 25; registration No. 2040831 with the USPTO, registered on February 25, 1997, class 2; registration No. 1445307 with the USPTO, registered on June 30, 1987, class 27; and registration No. 1449733 with the USPTO, registered on July 28, 1987, class 20.
The disputed domain name was created on December 27, 2010.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant is a leader in the design, marketing and distribution of premium lifestyle products in the categories of, inter alia, apparel, accessories, eyewear, fragrances, paint and home furnishings.
Complainant has made a substantial investment in advertising and promoting Complainant’s products and services in a wide variety of media, which are regularly featured in world-renowned magazines such as Vogue, Elle, GQ, Fortune, Sports Illustrated, Town & Country, Travel & Leisure, House Beatiful, etc.
Complainant’s marketing efforts, combined with its attention to quality, design and construction of its products, have resulted in billions of dollars in revenue. By virtue of a long history of use throughout the world and in the United States of America, and Complainant’s sales and promotional activities, the RALPH LAUREN trademark has generated valuable goodwill and reputation and become inherently distinctive of Complainant’s products.
Since 1967 Complainant and its predecessors-in-interest have continuously and extensively used RALPH LAUREN in connection with Complainant’s products. Additionally, Complainant is the owner of the domain name <ralphlauren.com> registered in September of 1996.
The disputed domain name is confusingly similar to Complainant’s famous RALPH LAUREN trademark. The disputed domain name simply combines the RALPH LAUREN trademark with a generic word, “paint,” and is virtually identical and confusingly similar to Complainant’s registered RALPH LAUREN trademark. The addition of descriptive matter to a trademark to form the disputed domain name is not sufficient to avoid a likelihood of confusion with the trademark.
In the present case, the generic term “paint” added to the disputed domain name does not merely avoid a likelihood of confusion; it actually increases it, because it directly relates to goods sold under the RALPH LAUREN mark. It is precisely because of this association by consumers with Complainant’s RALPH LAUREN mark that Respondent sought to register the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. 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 disputed domain name that incorporates Complainant’s RALPH LAUREN trademark. Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.
Respondent registered the disputed domain name only after Complainant had established rights in Complainant’s mark. Registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the disputed domain name, but rather constitutes bad faith under paragraph 4(b) of the Policy.
Complainant’s trademark and name are so well known and so widely recognized, there can be no legitimate use by Respondent.
Respondent had knowledge of Complainant’s RALPH LAUREN trademark when it registered the disputed domain name. This fact is supported by Respondent’s repeated exploitation and use of Complainant’s RALPH LAUREN trademark and copyrights on its website. Respondent is using the disputed domain name in connection with a website offering Complainant’s products, displaying Complainant’s copyrighted images, and appearing to be created by Complainant itself.
The website associated to the disputed domain name is designed to appear to be an official site belonging to or authorized by Complainant: the RALPH LAUREN trademark appears throughout such website; on the bottom of each page the following copyright notice appears: “Copyright 2010. All Rights Reserved. Ralph Lauren Paint.”. Such use of the RALPH LAUREN trademark is clearly intended to mislead viewers as to the source of such website.
According to Complainant, said website directs customers attempting to purchase Complainant’s products to <amazon.com> listings, where they are offered Complainant’s products as well as similar goods offered by competitors. Further, such website also displays several copyrighted photographs belonging to Complainant, these images are used without any permission or authorization from Complainant. Respondent is generating revenue by using the trademark value in Complainant’s RALPH LAUREN trademark in the disputed domain name, misleading consumers into believing Respondent’s website and the content therein is affiliated with or endorsed by Complainant.
Respondent registered and is using the disputed domain name in bad faith.
Complainant relies on the UDRP decision rendered in PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189, citing Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163, where it was held that the registration of a domain name “obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith”.
According to Complainant, Respondent’s use of the RALPH LAUREN trademark in the disputed domain name and throughout the associated website to direct customers to sales of Complainant’s products on <amazon.com> plainly shows bad faith registration and use.
The use of a private registration shielding service, such as that used by Respondent, also indicates bad faith and “defies the Policy’s overriding objectives to preserve accountability for unlawful acts on the Internet” (citing Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598).
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Determination of Proper Respondent
The Complaint filed with the Center on July 27, 2011, named Contact Privacy Inc. Customer 0126347680 as respondent. A printout of the corresponding WhoIs database confirmed the above. At the Center’s request, the Registrar sent its registrar verification on July 28, 2011, disclosing a different registrant of the disputed domain name. In response to an email from the Center, on August 2, 2011, Complainant filed an amendment to the Complaint in which it added vivienne westwood as additional Respondent.
Pursuant to the paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Since the name of the real holder of the disputed domain name registration has been identified, in this case, this Panel decides to have vivienne westwood as the proper Respondent and thus further references to Respondent herein should be understood to vivienne westwood2.
B. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the RALPH LAUREN trademark.
The disputed domain name entirely incorporates the RALPH LAUREN trademark, adding the suffix “paint” which is descriptive of a product that Complainant sells. The addition of such descriptive term is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (See Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375; GA MODEFINE SA v. AES OPTICS, WIPO Case No. D2000-0306).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s RALPH LAUREN trademark.
C. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that Complainant’s RALPH LAUREN trademark is widely-known internationally.
Complainant asserts that there is no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the disputed domain name. Likewise, Complainant asserts that Respondent has never been commonly known by the disputed domain name.
Complainant contends that Respondent is using the website associated with the disputed domain name to advertise Complainant’s products, displaying Complainant’s copyrighted images, and appearing to be created by Complainant itself. Such website does not show any disclaimer as regards Complainant thus leading consumers to believe that the website reached from the disputed domain name is owned by, or at least somehow associated with, Complainant. This is not a bona fide offering of products or services in this Panel’s view.
The unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent. As established in prior UDRP cases, such use is not a bona fide offering of products or services (See Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629).
Given the longstanding and extensive use and exposure of the RALPH LAUREN trademark, and in the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using the disputed domain name which entirely incorporates Complainant’s trademark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name3.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Complainant has evidenced that the RALPH LAUREN trademark was registered long before the disputed domain name was created. Taking into consideration the prolonged use and international exposure of the RALPH LAUREN trademark, it is clear for this Panel that Respondent should have been fully aware of the existence of Complainant’s trademark and products marketed thereunder at the time Respondent obtained the registration of the disputed domain name.
Complainant contends that the website associated to the disputed domain name directs consumers to <amazon.com>; however, there is no evidence in the file that proves the aforementioned.
The use of the disputed domain name for a website that is used to offer paints bearing Complainant’s RALPH LAUREN trademark, which are some of the products marketed by Complainant under such trademark, constitutes an improper use of Complainant’s trademark and, where coupled with any lack of disclaimer disassociating Complainant from such website, is indicative of bad faith4 for the purpose of the Policy.
This Panel considers that in using the disputed domain name in such way, Respondent has sought to create a likelihood of confusion with Complainant and its RALPH LAUREN trademark as to the sponsorship or source or affiliation or endorsement of the website associated to the disputed domain name, when in fact there is no such connection.
Complainant repeatedly referred to its RALPH LAUREN trademark as a famous mark, which Respondent did not rebut. Prior UDRP panel decisions have found that registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use5.
In light of the above, this Panel concludes that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <ralphlaurenpaint.net> be transferred to Complainant.
Dated: September 14, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several panel decisions. For instance, see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638.
3 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given[...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”; also, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”.