WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. PrivacyProtect.org/ Timmy Smith
Case No. D2011-2051
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 PrivacyProtect.org, of Nobby Beach, Queensland, Australia and Timmy Smith, of Orlando, Florida, United States of America.
2. The Domain Name(s) and Registrar(s)
The disputed domain names <ralphlauren-america.com> and <ralphlauren-usa.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2011. On November 21, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On November 23, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com
transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 23, 2011.
The Center verified that the Complaint together with the amendment to the Complaint 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 the Respondent of the Complaint, and the proceedings commenced on November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2011.
The Center appointed Ik Hyun Seo as the sole panelist in this matter on December 28, 2011. 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
The Panel finds that the Complainant is a well-known American luxury clothing and goods company, the products and services of which are regularly featured in a wide variety of media worldwide. The Complainant and its predecessors have used the RALPH LAUREN mark since 1967 and the Complainant holds trademark registrations in the RALPH LAUREN family of marks.
The Respondent appears to be an individual with a residence in the state of Florida, who may have at one point used the services at the website <privacyprotect.org> in order to withhold his personal information from the registration details for the disputed domain names.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the RALPH LAUREN trademark in which the Complainant has rights. Namely, the Complainant has continuously and extensively used the mark from as early 1967, and has owned trademark registrations in the RALPH LAUREN family of marks since 1987. The additional portions “america” and “usa” need not be considered as they are merely geographic indications.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain names, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain names were registered and used in bad faith. The Complainant explains that email addresses utilizing the disputed domain names were used to illegally obtain personal financial information from consumers. This shows the Respondent’s attempt to obtain improper revenue from the reputation and goodwill of the RALPH LAUREN mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds trademark registrations for RALPH LAUREN in the United States. The disputed domain names <ralphlauren-america.com> and <ralphlauren-usa.com> entirely incorporate the Respondent's trademark, and simply add the additional portions “america” and “usa” which are merely geographic indicators that do not influence the similarity test. Accordingly, <ralphlauren-america.com> and <ralphlauren-usa.com> can be viewed as confusingly similar to the Complainant's trademark.
For the reasons mentioned above, the Panel finds that the first element has been established.
B. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating his rights or legitimate interests in the disputed domain names. However, the Respondent in this case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the second element has been established.
C. Registered and Used in Bad Faith
The Panel finds that there are more than sufficient reasons to find bad faith in this case. The Respondent created email addresses utilizing the disputed domain names ([…]@ralphlauren-america.com and […]@ralphlauren-usa.com) and contacted job-seekers from these email addresses falsely claiming to be a “senior staffing coordinator” for the Complainant. To accept the positions, the Respondent directed job-seekers to a credit report page, where they were instructed to provide personal financial information. These facts clearly show that the Respondent was aware of the Complainant, the Complainant’s business and the Complainant’s rights in the RALPH LAUREN trademark. Further, by carrying out this scheme, the Complainant misappropriated the Complainant’s trademark and the associated good will and reputation, as a means of defrauding consumers and stealing their personal information. Such use is clear evidence of bad faith registration and use.
For the reasons given above, the Panel finds that this third and final element has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <ralphlauren-america.com> and <ralphlauren-usa.com> be transferred to the Complainant.
Ik Hyun Seo
Dated: January 11, 2012