WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. Polo
Case No. D2002-0148
1. The Parties
1.1 The Complainant is PRL USA Holdings, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 103 Foulk Road, Suite 25, Wilmington, Delaware, United States of America.
1.2 The Respondent is Polo, an entity having an address at P.O. Box 248, Eugene, Oregon, United States of America.
2. The Domain Names and Registrar
The domain names at issue are <ralph-lauren-polo.com> and <polo-style.com>, which domain names are registered with Bulkregister.com, Inc., based in Baltimore, Maryland, United States of America ("Bulkregister.com").
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 14, 2002, and the signed original together with four copies was received on February 15, 2002. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated February 21, 2002.
3.2 On February 26, 2002, a Request for Registrar Verification was transmitted to the registrar, Bulkregister.com, requesting it to: (1) confirm that the domain names at issue are registered with Bulkregister.com; (2) confirm that the entity identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On February 26, 2002, Bulkregister.com confirmed by reply e-mail that the domain names are registered with Bulkregister.com, are currently on locked status, and that the Respondent is the current registrant of the names. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental 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 Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on February 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Bulkregister.com and ICANN), setting a deadline of March 20, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Bulkregister.com’s confirmation. 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 Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On March 27, 2002, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On April 12, 2002, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant registered the trademark POLO BY RALTH LAUREN in connection with men's suits, clothing, and accessories, and women's clothing with the United States Patent Office ("USPTO") on February 5, 1974, and for diverse items of wearing apparel with the USPTO on October 11, 1988. Complaint, Annexes C1 and C13.
4.2 Complainant registered the trademark POLO with the USPTO in connection with wearing apparel on October 1, 1985, in connection with athletic shoes on October 11, 1988, in connection with home furnishing products on January 7, 1992, and in connection with information in the field of fashion and lifestyle by means of a global computer network on July 29, 1997. Complaint, AnnexC9, C14, and C15.
4.3 Complainant registered the trademark RALPH LAUREN and design with the USPTO in connection with suits, overcoats, sweaters, ties, shirts and pants on May 14, 1974, and in connection with women's clothing and accessories on October 19, 1976. Complainant registered the trademark RALPH LAUREN with the USPTO in connection with bed and table linens and housewares on July 28, 1997, and in connection with shoes on December 15, 1987, and in connection with clothing on November 27, 1990. Complaint, Annexes C2, C3, C4, C5, and C6.
4.4 During the fiscal year 1999, Ralph Lauren has net sales of $4.2 billion for products bearing the above trademarks and similar trademarks. During this period more than $51,000,000 was expended in advertising the products and trademarks.
4.5 On November 10, 2000, Polo launched the web site, "www.polo.com", and in the calendar year 2001, more than six million visitors viewed the site.
4.6 On October 6, 2001, Respondent registered the domain names at issue.
4.7 Both domain names at issue currently link to Complainant's web site at "www.polo.com".
4.8 Complainant apparently did not attempt to communicate with Respondent before filing its Complaint .
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered domain names which are confusingly similar to the trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
3) that the domains name have been registered and are being used in bad faith.
6.4 It is clear that the domain names at issue are confusingly similar to the trademarks in which the Complainant has rights. In the case of <ralph-lauren-polo.com>, the combining of Complainant's trademarks with the additions of hyphens creates a confusingly similar, if not identical, domain name. EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 (<efg-private-bank.com>); The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 (<euro-tunnel.com>). In the case of <polo-style.com>, the addition of the suffix "-style" does not destroy the substantial similarity. G.A. Modefine SA v. AES Optics, WIPO Case No. D2000-0306 (<armani-sunglasses.com>).
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Failure to respond and deny this allegation entitles the Panel to draw inferences adverse to Respondent. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Complainant failed to make any factual allegations as to nature of use. Complainant failed to allege that Respondent was not using the domain names at issue, and that such non-use and other actors constituted bad faith inaction as set out first in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.7 The Panel entered the domain names in question and was taken on both occasions to Complainant's commercial web site "www.polo.com". The Panel is entitled to make this independent investigation, especially where the Complaint lacks essential factual allegation or where the Respondent has failed to respond. Terabeam Corp. v. Colin Goldman, WIPO Case No. D2001-0697, at 6 and 6, n. 5. The use of the domain names at issue currently being made by Respondent is not in bad faith.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, but that Complainant has failed to prove that the Respondent's domain names are being used in bad faith. Accordingly, the Complaint in this matter must be dismissed.
M. Scott Donahey
Dated: April 29, 2002