WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Polaris Industries Inc. v. Pablo Jose de Pablo Limas
Case No. D2014-2082
1. The Parties
Complainant is Polaris Industries Inc. of Medina, Minnesota, United States of America ("USA"), represented by Noerr LLP, Germany.
Respondent is Pablo Jose de Pablo Limas of Terrassa, Barcelona, Spain.
2. The Domain Names and Registrar
The disputed domain names are <accesoriospolarisrzr.com>, <accessoriespolarisrzr.com>, <monderzr.com>, <monderzr.net>, <mundorzr.com>, <mundorzr.net>, <partspolarisrzr.com>, <polarisrzraccessoires.com>, <polarisrzrpieces.com>, <recambiospolarisrzr.com>, <rzrworld.com> and <rzrworld.net>, which are registered with Arsys Internet, S.L. dba NICLINE.COM (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 28, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
According to the Registrar's verification response to the Center of November 28, 2014, the language of the registration agreement for the disputed domain names is Spanish (as of that date the Center's communications to the parties were made in both Spanish and English). Therefore, the Center requested Complainant to provide at least one of the following: (i) satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or (ii) submit the Complaint translated into Spanish; or (iii) submit a request for English to be the language of the administrative proceedings. On December 1, 2014, Complainant submitted a request that English be the language of the proceedings, to which Respondent did not reply.
The Center verified that 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 Respondent of the Complaint and the proceedings commenced on December 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 31, 2014.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on January 13, 2015. 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 paragraph 7 of the Rules.
4. Preliminary Issue: Language of the Proceedings
The general rule under paragraph 11(a) of the Rules is that the language of the administrative proceeding shall be the language of the Registration Agreement (i.e. Spanish in this case), unless otherwise agreed to by the parties, and subject to the authority of the panel to decide otherwise, taking into consideration the circumstances of the case.
The Complaint was filed in English, and Complainant expressly asked for the proceedings to be conducted in English, pointing out that the content of the websites associated with most of the disputed domain names is in English. Respondent did not object to Complainant's request. Taking into account the above, this Panel resolves to have the proceedings conducted in English (see Servicios y Productos de Salud, S.A. de C.V. v. Totalmed, WIPO Case No. D2012-0133, and Louise Rennison v. Milan Kovac, WIPO Case No. D2012-0211).
5. Factual Background
Complainant has rights over the RZR trademark, for which it holds several trademark registrations, such as: registration No. TMA840608 with the Canadian Intellectual Property Office, registered in class 12 on January 18, 2013, application date June 30, 2010; and registration No. 4047705 with the United States Patent and Trademark Office ("USPTO"), registered in class 12 on November 1, 2011, application date June 29, 2010, with stated first use in commerce in May 2007.
Complainant also has rights over the POLARIS trademark, for which it holds several trademark registrations, such as: registration No. 000295352 with the Office for Harmonization in the Internal Market of the European Union ("OHIM"), registered in class 12 on December 21, 2001, application date April 1, 1996; and registration No. 767029 with the USPTO, registered in class 12 on March 24, 1964, with stated first use in commerce in July 1949.
The disputed domain names were created on May 24, 2013, except for <accesoriospolarisrzr.com> and <recambiospolarisrzr.com>, which were created on December 11, 2012, and for <mundorzr.com> and <mundorzr.net>, which were created on June 29, 2012.
6. Parties' Contentions
Complainant's assertions may be summarized as follows.
Complainant has been manufacturing snowmobiles since the 1950s and has since become one of the leading companies on the snowmobile industry worldwide. In the 1980s, Complainant entered the off-road vehicles industry and created the first USA-made all-terrain vehicle. This was followed by the manufacture and sale of motorcycles and innovative utility side-by-side vehicles in the 1990s. Complainant introduced its first recreational side-by-side off-road vehicle under its RZR marks in 2007. Complainant has consistently been able to maintain its number one position in the North American off-road vehicle market, and according to Wikinvest, it ranks as number one in the European off-road vehicle markets as well.
Complainant's products bearing the POLARIS and RZR trademarks are sold through a network of approximately 1750 independent retailers throughout North America, and a large number of subsidiaries as well as distributors in over 100 countries outside North America. Complainant's continuous advertising and sponsorship activities have led to a constant presence of the POLARIS and RZR marks in the mind of consumers of recreational all-terrain side-by-side vehicles. Complainant's annual reports show that during the years 2012 and 2013, Complainant expended USD 210.4 million and USD 270.3 million, respectively, for sales and marketing activities worldwide.
Complainant owns several trademark registrations for RZR and POLARIS in different jurisdictions. Complainant's trademarks have a priority that predates Respondent's registration of the disputed domain names.
When visually and aurally comparing Complainant's trademarks POLARIS and RZR with the disputed domain names, there is no question that they are confusingly similar. Complainant's RZR and/or POLARIS trademarks are reproduced in whole in all the disputed domain names. Each of the disputed domain names combines these trademarks with solely descriptive elements.
Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no evidence for Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
Respondent's websites hosted at most of the disputed domain names show that Respondent deals with spare parts and accessories for Complainant's RZR branded products (the disputed domain names <mundorzr.net>, <rzrworld.net>, and <monderzr.net> do not resolve to an active website). Complainant has at no time authorized the registration of domain names containing its trademarks and/or the use of its trademarks on the corresponding websites. There is no form of licensing agreement with Respondent and Respondent is not an authorized dealer.
Respondent is not selling original parts manufactured by Complainant. Instead, most of the spare parts and accessories sold on the websites associated to the active disputed domain names appear to be manufactured by Respondent itself under the brand "Crown Line" or "RW". For instance, next to a pair of racing goggles it is shown "The RZR WORLD'S team has left nothing to chance to make one goggles (sic!) that would fit 100% to what you need to drive a RZR" and next to a pair of gloves it states "In line with the development of a brand that improves existing products rzrworld team has created these RZR gloves. Our team has paid meticulous attention to the gloves that were on the market and has left nothing to chance to make ones that would fit 100% to what you need to drive a RZR". Further, it sells parts and accessories manufactured by third parties under the brands "BRAID", "GT2i" "Kanati Mongrel", and "OMP".
Where a registrant has been explicitly granted the right to resell the trademark holder's products, a number of panels under UDRP proceedings have held that without express authority of the relevant trademark holder, such a right to resell or distribute that trademark holder's products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark. This applies regardless of whether the domain names resolve to an active website or not.
Even in such cases where panels under UDRP proceedings have accepted a registrant's right as a reseller or distributor to use the relevant trademark within its domain name, the bona fide use of a domain name by such a reseller or distributor always requires that the website sell only the trademarked good and that the website accurately and prominently disclose the registrant's relationship with the trademark holder. This is not the case at present: neither the origin of the products sold and advertised under the websites nor the relationship between Complainant and Respondent is accurately and prominently disclosed. On the contrary, Respondent uses the trade name "RZR WORLD" on its websites – that incorporates Complainant's trademark – and makes it appear as though Respondent is part of Complainant's distribution structure. Respondent has copied the look and feel of Complainant's websites. Therefore, Internet users will be led to believe that either the websites themselves belong directly to Complainant or at least that Respondent is economically linked to Complainant.
The disputed domain names have been registered and are being used in bad faith by Respondent. With the registration of the disputed domain names, Respondent intentionally attracts, for commercial gain, Internet users to Respondent's websites, creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's websites.
When comparing excerpts from Complainant's and Respondent's websites, it becomes evident that Respondent has adopted a highly similar marketing strategy to Complainant, using an almost identical colour scheme, which prominently displays Complainant's company name (Polaris) and the letters RZR in red colour, and a confusingly similar arrangement of black and white design elements. Therefore, Respondent's website creates a very similar overall impression to that of Complainant. Given that Respondent and Complainant sell and market closely related and complementary goods, Internet users will confuse the commercial origin of Respondent's products and think that Respondent is economically linked to Complainant. Respondent is taking unfair advantage of the distinctive character and the repute of Complainant's trademarks. Respondent's clear intention is to free-ride on the coattails of Complainant's famous trademarks and to trade upon its reputation.
On January 8, 2014, Complainant sent a cease and desist letter to Respondent with regard to its infringing use of the trademark RZR and to Respondent's attempt to obtain exclusive rights to the mark RZR WORLD by way of a community trademark application filed with OHIM. This letter remained unanswered and the trademark application active, forcing Complainant to initiate opposition proceedings.
A finding of bad faith also has to be assumed at present for the disputed domain names <mundorzr.net>, <monderzr.net>, and <rzrworld.net> that do not resolve to an active website. It is the established consensus view of panels under UDRP proceedings that the apparent lack of active use of a domain name (passive holding), does not as such prevent a finding of bad faith. Instead, panels may draw inferences about the registrant's bad faith, e.g. based on the circumstances surrounding registration. Given the clear infringing use Respondent is making of its nine other disputed domain names, its bad faith with regards to the disputed domain names <mundorzr.net>, <monderzr.net>, and <rzrworld.net> is obvious.
At the very least, by registering multiple domain names which are similar to Complainant's trademarks, Respondent is preventing Complainant from reflecting its trademark in a corresponding domain name.
Complainant requests that the disputed domain names 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 response from Respondent does not automatically result in a favorable decision for Complainant.1 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain names are 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 names; and (iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the POLARIS and RZR trademarks.
Each disputed domain name entirely incorporates the POLARIS and/or RZR trademarks, adding a prefix ("accesories", "monde", "parts","mundo", "recambios".) or a suffix ("world", "pieces", "accesoires"), respectively. The addition of such terms is not enough to avoid similarity, nor does it add anything to avoid confusion with Complainant's trademarks (see GA Modefine SA V. AES Optics, WIPO Case No. D2000-0306 and Scania CV AB v. Ana Garcia, WIPO Case No. D2013-1511).
Therefore, this Panel finds that the disputed domain names are confusingly similar to Complainant's trademarks.
B. 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 names.
Complainant asserts that it has not authorized the registration of the disputed domain names containing its trademarks and/or the use of its trademarks on the corresponding websites, that there is no form of licensing agreement with Respondent, and that Respondent is not an authorized dealer.
The Complaint makes reference to a cease and desist letter allegedly sent to Respondent (attached as exhibit 10 of the Complaint) and to a certain community trademark application 12305281 for RZR WORLD (and design), which Complainant asserts was filed by Respondent. This Panel notices that such cease and desist letter is addressed to a person whose name, although similar, differs from Respondent's. This Panel verified the status of such trademark application number at OHIM's official website and found that said application appears in the name of the person to whom such cease and desist letter was addressed, and that said trademark application actually is for X RZR WORLD XVI (and design).2 Upon considering the above, and the terms included in the disputed domain names (particularly "rzrworld", "mundorzr" and "monderzr"), this Panel concludes on balance that there is no evidence that indicates that Respondent is commonly known by any of the disputed domain names.
Complainant contends that Respondent is not selling original parts manufactured by Complainant through the websites associated with the active disputed domain names, but rather spare parts and accessories that appear to be manufactured by Respondent itself under the brand "Crown Line" or "RW" and parts and accessories manufactured by third parties under the brands "BRAID", "GT2i", "Kanati Mongrel", and "OMP". Complainant further contends that the websites associated with the active disputed domain names do not clearly disclose the relationship between Complainant and Respondent, and that they convey the impression that such websites and the products offered through them correspond to, or are somewhat associated with, Complainant (printouts of the websites associated with several of the disputed domain names which evidence the aforesaid were attached as exhibits to the Complaint). As established in prior UDRP cases, such use is not a bona fide offering of products or services.3
Without a Response, there is no explanation as to why Respondent registered 12 domain names incorporating Complainant's trademarks, which seems as if Respondent were trying to corner the market. Furthermore, in this Panel's view, the lack of Response is also indicative that Respondent either has no legitimate interests in the disputed domain names or lacks arguments and evidence to support its holding of the disputed domain names.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain names.4 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain names by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent's registration and use of the disputed domain names is in bad faith.
The overall evidence in the file indicates that Respondent's choice of the disputed domain names was deliberate, with the intention to benefit from the reputation and goodwill of Complainant's trademarks, which denotes bad faith.
All websites associated with the active disputed domain names are used to offer non-OEM parts and accesories, under other trademarks, for Complainant's RZR branded-products. There appears to be no disclaimer disassociating such websites from Complainant. Said websites show Complainant's POLARIS and RZR trademarks and have a resemblance with Complainant's website. Such use of a disputed domain name constitutes an improper use and is enough for this Panel to establish Respondent's bad faith for purposes of the Policy.
In using the active disputed domain names, Respondent has sought to create a likelihood of confusion with Complainant and Complainant's trademarks as to the sponsorship, source, affiliation, or endorsement of the websites associated with the active disputed domain names and products offered therein, when in fact there is no such connection.
As regards the disputed domain names <mundorzr.net>, <monderzr.net> and <rzrworld.net> that do not resolve to an active website, it seems to this Panel that there are no bases upon which to conceive a legitimate and bona fide use of them by Respondent.5 In reaching that conclusion, this Panel has taken into consideration the following circumstances: (i) Complainant's registration and use of its trademarks preceded the creation of the disputed domain names by several years; (ii) Respondent's use of Complainant's trademarks at the disputed domain names without Complainant's authorization; (iii) the content of the websites associated with the other 9 disputed domain names; and (iv) the registration of the 12 disputed domain names, all of which contain Complainant's POLARIS and/or RZR trademarks.6
Furthermore, the passive holding of those domain names does not prevent a finding of bad faith.
In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 names <accesoriospolarisrzr.com>, <accessoriespolarisrzr.com>, <monderzr.com>, <monderzr.net>, <mundorzr.com>, <mundorzr.net>, <partspolarisrzr.com>, <polarisrzraccessoires.com>, <polarisrzrpieces.com>, <recambiospolarisrzr.com>, <rzrworld.com> and <rzrworld.net> be transferred to Complainant.
Date: January 27, 2015
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: "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 cease and desist letter was addressed to Jose Antonio de Pablo Martin, who is the same that appears as owner of such trademark application at OHIM's website. This Panel noticed that the street address of Jose Antonio de Pablo Martin under such trademark application at OHIM's website corresponds to Respondent's street address (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), available at "www.wipo.int/amc/en/domains/search/overview2.0/").
3 See Volvo Trademark Holding AB v. Franks Foreign Auto, WIPO Case No. D2004-0315: "Respondent is not making a legitimate non-commercial or fair use of the Domain Name [...] the products sold on the site are not genuine VOLVO lamps [...] Respondent's intent is not only to make a commercial gain, but to do so by attracting customers to its site by using the famous VOLVO mark, thereby misleading and deceiving them into believing its business and goods are somehow sanctioned or approved by Complainant and are genuine".
4 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".
5 See section 3.2, WIPO Overview 2.0. See also Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Caso No. D2003-0882: "Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate".
6 See section 3.3, WIPO Overview 2.0. See also America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713: "[t]he registration of several names corresponding to Complainant's service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy".