WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PRL USA Holdings, Inc. v. Alvaro Collazo

Case No. D2002-0108

The Complainant is PRL USA Holdings, Inc, a Delaware (USA) limited partnership with its principal place of business in Wilmington, Delaware USA, represented by Anthony F. LoCicero and Holly Pekowsky of the law firm Amster, Rothstein & Ebenstein, New York, New York, USA.

The Respondent is Alvaro Collazo, an individual who resides in Tarariras, Colonia, Uruguay. No attorney or other representative has appeared on Respondent's behalf in this proceeding.

The domain name at issue (Domain Name) is:

<e-polo.com>.

According to the "whois" database, Respondent registered the Domain Name on December 10, 2001.

The registrar is iHoldings.com, Inc., doing business as dotregistrar.com.

The WIPO Arbitration and Mediation Center (the Center) received Complainant's Complaint on January 31, 2002 (electronic copy), and February 5, 2002 (hard copy). The Center verified that the Complaint satisfied the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), 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). Complainant made the required payment to the Center.

On February 5, 2002, the Center transmitted via email to the Registrar a request for registrar verification in connection with this case. When no reply was received, the Center sent a reminder on February 10, 2002. On February 15, 2002, the Center confirmed from the whois database that Respondent is the owner and administrative and technical contacts for the Domain Name.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, on February 15, 2002, the Center transmitted to the Respondent, via post/courier and e-mail, a Notification of Complaint and Commencement of the Administrative Proceeding. The formal date of the commencement of this administrative proceeding was originally February 15, 2002.

The Center received no Response from Respondent by March 10, 2002, the deadline for submitting a Response. Accordingly, on March 11, 2002, the Center sent a notice of default to Respondent by post/courier and e-mail. On March 12, 2002, the Center advised the parties by email that it had sent the original notification of Complaint to the wrong postal address for Respondent. The Center cancelled its original notice of default, and re-sent the Notification of Complaint and Commencement of the Administrative Proceeding to Respondent by post/courier and e-mail, with a new date of March 12, 2002, as the date of commencement of administrative proceedings.

On March 13, 2002, Respondent sent an email message to the Center's case administrator, stating:

"I live in Uruguay and I raise polo horses and I'm planning to offer my horses for sale thru the internet. I consider that this trial is very unfair. Polo is FIRST a sport and THEN a mark of clothes. You need to do a better research."

The Center replied by email, inquiring if Respondent would submit a formal Response. Respondent replied by email as follows:

"My limited english is not sufficient and I consider my last email an answer good enough to be taken seriously. Of course, the lawyers of Ralph Lauren have more power and money, but my business is as legitimate as theirs. . . . "

The Center advised Respondent that its emails would be considered his Response, pointing out that he had until April 1, 2002, to make a formal submission. Respondent notified the Center on March 15, 2002, that his earlier emails should be considered his Response.

By email message dated March 15, 2002, counsel for Complainant requested an opportunity to submit a reply. The Center informed Complainant that this request would be referred to the Panel after its appointment. In Procedural Order No. 1, dated March 28, 2002, this Administrative Panel denied this request[1].

In view of the Complainant's designation of a single panelist and Respondent's default the Center invited Mr. Richard G. Lyon to serve as a Panelist.

After receiving Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, on March 26, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative Panel. The projected decision date is April 9, 2002.

I find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules, and that the Panel has jurisdiction over this dispute.

The Administrative Panel shall issue its decision based on the Complaint, the evidence presented, the Policy, the Rules, and Supplemental Rules.

Complainant, an affiliate of fashion designer Ralph Lauren, is the owner of many trademarks, service marks, and trade names incorporating a polo motif. These marks (collectively, the Marks) include POLO, POLO SPORT, POLO STORE, POLO RALPH LAUREN, and a fanciful design of a polo player on a horse, among many others. The POLO brand is world famous in fashion, design, and other areas of commerce. Complainant's affiliates manufacture and sell (directly and through distributors) diverse products and render diverse services under their many POLO marks. Many of the Marks are registered in the United States and around the world[2].

Complainant has not licensed Respondent to use its name or marks.

Respondent sells polo horses in Argentina. He uses the Domain Name for a web site that describes his horses and provides certain regulations governing the game of polo and polo horses in Argentina. The web site has no reference to apparel, home furnishings, or any business other than polo horses.

The Complainant's contentions may be summarized as follows:

The Domain Name incorporates Complainant's principal Mark and is therefore confusingly similar or identical to its Marks. The Marks are famous and have acquired secondary meaning as identified with Complainant and its goods and services and the high quality associated with those goods and services. Respondent has no rights or legitimate interests in respect to the Domain Name; he does not use the word polo in his business and has no registered trademark that includes the word polo. Because of the Marks' renown, Respondent was surely aware of Complainant's name and rights when it registered the Domain Name. Bad faith should be presumed from the foregoing.

Respondent's contentions are quoted in part 3 above.

The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements.

This case is easily resolved for two independent reasons. First, Complainant has not alleged any facts from which I could find the second and third elements of paragraph 4(a). The sole allegations on these matters, set out in the margin[3], are, standing alone, inadequate to make out either lack of legitimate interest or bad faith in registration or use. I cannot infer lack of legitimate interest or bad faith from the Complaint, even if I accept as true (as I do) the extent, fame, and value of the Marks. Nothing in the Complaint identifies any infringing or other improper conduct by Respondent. The only conduct at all of Respondent referred to in the Complaint is registration of the Domain Name.

Second, and more importantly, examination of Respondent's web site both demonstrates Respondent's legitimate interest in the Domain Name and confirms that he has done nothing that constitutes bad faith. Polo is an ancient game, originating in Asia and now played around the world. As noted in Respondent's email, the word and the game antedate Complainant's use of it Marks, by many centuries. As a seller of polo horses, Respondent is entitled to use this common English (and Spanish) word in his Domain Name. There is no evidence (indeed no allegation) that he is competing with Complainant, using the Domain Name to divert or attract Complainant's customers, tarnishing Complainant's Marks, extorting Complainant into buying the Domain Name, or otherwise acting improperly. Respondent is actively using the Domain Name for what appears to be an entirely legitimate business[4], a fact that belies any possible claim[5] that Respondent registered the Domain Name with the intent to sell it to Complainant.

Complainant has made its Polo brands world famous, in many areas of goods and services. This commercial and marketing success does not, however, give Complainant the exclusive right to all domain names employing the word polo. That fact is especially noteworthy in this case, where Complainant has shown no competitive injury. The Policy and the Rules require proof of no legitimate interest and bad faith. That proof is utterly lacking in this case.

8. Decision

For the foregoing reasons, the Complaint is dismissed.

1. Rule 12 authorizes additional submissions only by permission of the Panel. As is true of most Panelists, I believe that such permission should be granted sparingly, to maintain the format and expedited nature contemplated by the Rules. There is nothing in Respondent's e-mails that Complainant could not reasonably have anticipated, or any other reason to depart from the ordinary procedure.

2. The earliest registered Mark submitted with the Complaint dates from 1974.

3. "Respondent's bad faith in registering and using the Domain Name< e-polo.com> is evident in a number of ways. First, Respondent owns no trademark registrations which include the mark POLO, nor does he do business under the name Polo.
Second, due to the fame of [Complainant's] Polo trademarks . . . , Respondent can hardly allege that he was unaware that the mark is owned by another entity." Complaint, V.
4. There is no foundation in the record for Complainant's conclusionary allegation to the contrary.
5. As noted, Complainant makes no such claim.