WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA HOLDINGS, INC. v. Private Whois Service
Case No. D2010-0816
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 Private Whois Service of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <ralphlauren-usa.net> (“Disputed Domain Name”) is registered with Internet.bs Corp (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2010. On May 21, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Respondent of the Complaint, and the proceedings commenced on May 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2010.
The Center appointed William P. Knight as the sole panelist in this matter on June 25, 2010. 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 Disputed Domain Name was registered on May 7, 2010.
The Complainant owns a number of trademarks incorporating the words “Ralph Lauren” in the United States and the domain name <ralphlauren.com>. In other countries, such trademarks are registered in the name of The Polo/Lauren Co LP, which having the same address as the Complainant the Panel accepts is controlled by, or under the same control as, the Complainant, and various ccTLDs incorporating the words “Ralph Lauren” are registered in the names of subsidiaries. The Complainant and its related entities are world famous suppliers of a wide range of products including fragrances and cosmetics, clothing, home furnishings and other goods, being in business since, or the successors in title to a business begun in, 1967. The Panel has no hesitation in finding RALPH LAUREN to be a world famous mark.
There is no evidence that the Disputed Domain Name has ever been used to host a website. However, the Complainant has provided evidence, uncontradicted by the Respondent, that within days after its registration, the Disputed Domain Name became associated with fraudulent employment offers posted on the website “www.craigslist.com”, responses to which resulted in emails from the Disputed Domain Name misrepresenting the sender to be connected with the Complainant seeking to obtain credit information from the recipient.
This dishonest use of the Disputed Domain Name was brought to the attention of the Registrar, which is also the operator of the Respondent privacy service, with supporting evidence, who has apparently taken no action.
5. Parties' Contentions
The Complainant submits that the Disputed Domain Name is confusingly similar to its well-known and distinctive trademark RALPH LAUREN. The Complainant observes that the addition of the generic word “-usa” and the gTLD suffix “.net” does not serve to distinguish the Disputed Domain Name and, indeed, the addition of “-usa” clearly increases the likelihood of deception.
The Complainant further asserts that the Respondent is not licensed by it and has never shown any legitimate use of the Disputed Domain Name. On the contrary, the only use made of the Disputed Domain Name has been to further a fraudulent scheme.
For the same reasons, and on the same evidence, the Complainant argues that the Disputed Domain Name was registered for the express purpose of deceiving employment seekers, a most vulnerable group, to which use it was immediately put, and this demonstrates the bad faith requirement to be established by the Complainant under the Policy.
The Complainant requests that the Disputed Domain Name is transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
For the reasons argued by the Complainant, the Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant's trademark RALPH LAUREN.
B. Rights or Legitimate Interests
Again, on the grounds submitted by the Complainant, the Panel also finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Passive holding of a domain name over a short period of time, without any further conduct, may not in itself lead to a conclusion of an absence of rights or legitimate interests, but in combination with the course of deceit undertaken by whomever is in control of the Disputed Domain Name this conclusion becomes inescapable. Additionally, the Panel notes the Respondent has provided no Response in this matter to rebut the Complainant's allegations. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must establish that the Disputed Domain Name has been registered and is being used in bad faith.
The Disputed Domain Name is not being used at all, in the sense of providing an address for a website, and certainly none of the behaviour listed as showing bad faith in paragraph 4(b) of the Policy is here present.
However, paragraph 4(b) of the Policy makes clear that the list of circumstances showing bad faith is non-exclusive; see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Club Méditerranée S.A. v. Clubmedical, WIPO Case No. D2000-1428; and Time Inc. v. Chip Cooper, WIPO Case No. D2000-1342. In this matter, the fact that the Disputed Domain Name was registered in circumstances where the Respondent must be taken to have known of the Complainant's trademark rights, and the fact that the fraudulent scheme undertaken by the Respondent commenced immediately upon registration, make the conclusion inescapable that the Disputed Domain Name was selected and registered because it would deceive the recipients of the emails used in that scheme. Therefore, the Panel is satisfied that the Respondent's registration and use of the Disputed Domain Name qualifies as bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For these reasons, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <ralphlauren-usa.net> be transferred to the Complainant.
William P. Knight
Dated: June 30, 2010