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PRL USA Holdings, Inc. v. Freddy Militana [2005] GENDND 2117 (12 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRL USA Holdings, Inc. v. Freddy Militana

Case No. D2005-1026

1. The Parties

The Complainant is PRL USA Holdings, Inc., of New York, United States of America represented by Greenberg Traurig, LLP, United States of America.

The Respondent is Freddy Militana, of New York, United States of America, represented by Michael J. Karlin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <polosportcondoms.com> is registered with Catalog.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2005. On October 3, 2005, the Center transmitted by email to Catalog.com its first request for registrar verification (subsequent requests were sent on October 6, 7, and 11, 2005) in connection with the domain name at issue. On October 11, 2005, Catalog.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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”).

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 October 12, 2005. In accordance with the Rules, paragraph 5(a), and pursuant to the agreement reached by the parties, the due date for Response was November 21, 2005. The Response was filed with the Center on November 22, 2005.

The Center appointed Mr. William R. Towns as the sole panelist in this matter on November 30, 2005. 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 Complainant is the owner of numerous registered marks for POLO, POLO SPORT and other composite marks incorporating POLO (hereinafter the “POLO marks”), in relation to a broad range of goods and services, including apparel and other fashion merchandise, fragrance, and home furnishings. The POLO marks have been used in commerce in the United States as far back as 1967, and a number of United States courts have recognized the POLO marks as a famous and inherently distinctive family of marks. The Respondent concedes that the Complainant’s POLO marks are famous.

The Respondent registered the disputed domain name, <polosportcondoms.com>, on or about April 30, 2002. The domain name directs internet users to the Respondent’s PoloSportCondoms website. When the Complainant initially contacted the Respondent in July 2005, the Respondent’s website included an image of a condom wrapper upon which the Complainant’s stylized POLO SPORT mark had been superimposed. Condoms and books were offered for sale, and the website contained links to Amazon.com and to several online businesses selling t-shirts and other apparel.

Since receiving the Complainant’s cease and desist letter in July 2005, the Respondent continues to operate the PoloSportCondoms website. However, the Respondent has removed from the website the image of the condom wrapper bearing the Complainant’s mark from the website, discontinued offering condoms and books for sale, eliminated links to other sites selling apparel or other merchandize, and posted a disclaimer as to any affiliation with the Complainant. In other respects, the Respondent’s PoloSportCondoms website remains largely unchanged, and the Respondent continues to use the disputed domain name to direct internet users to the website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Respondent has intentionally registered a domain name that is confusingly similar to the Complainant’s highly distinctive and famous POLO mark in order to trade on the goodwill developed in the mark. In particular, the Complainant contends that the Respondent has offered condoms and books for sale on his website, and has made an infringing use of the Complainant’s registered POLO SPORT mark and design in so doing. The Complainant further alleges that the Respondent is displaying pornographic images on the website and is posting obscene material, including jokes.

The Complainant argues that its POLO marks are so widely known and recognized that the Respondent cannot establish rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent was aware of the Complainant’s mark when he registered the domain name, is not licensed or otherwise authorized to use the Complainant’s mark, and adopted the domain name incorporating the Complainant’s famous mark for the specific purpose of attracting internet users to the website.

The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith to intentionally attract internet users to his website for commercial gain, by creating a likelihood of confusion with the Complainant and its famous marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. According to the Complainant, the Respondent’s posting of a disclaimer on the website and cessation of commercial activities since receiving the Complainant’s cease and desist letter does not cure such bad faith. Further, the Complainant argues that bad faith is shown by the presence of sexually explicit material on the Respondent’s website.

B. Respondent

The Respondent represents himself as an actor and stand-up comic from New York City. According to the Respondent, he uses the PoloSportCondoms website for artistic, creative and humorous purposes only. He alleges that he uses the website to parody the Complainant, and that he adopted the disputed domain name in order to “tap into” the “pretentious crowd” fixated on brands such as the Complainant’s Polo Sport label. He denies that his website is either obscene or pornographic, although he acknowledges that some of the material on the website may be considered “frank” in nature.

The Respondent further argues that he has rights or legitimate interests in the disputed domain name because “polo” is a common word, which the Complainant cannot assert exclusive rights to under the Policy. In addition, the Respondent denies any bad faith intent to sell the domain name to the Complainant, to confuse consumers or to operate the website for commercial gain. He states that he has neither sought nor received any financial gain from the book and condom links on his website, which were offered solely as a courtesy to website visitors.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 & 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a), a number of panels have concluded that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the POLO marks, including the POLO SPORTS marks, in which the Complainant clearly has established rights through registration and use. See Lockheed Martin Corporation. v. Dan Parisi, WIPO Case No. D2000-1015; The Salvation Army v. Info-Bahn, Inc., WIPO Case No. D2001-0463. The critical inquiry under the first element of paragraph 4(a) is simply whether the mark and domain name, when directly compared, have confusing similarity. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (domain name incorporating mark in its entirety is confusingly similar). The Panel finds that to be the case here. Accordingly, the Complainant has met its burden under paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant clearly has not authorized or consented to the Respondent’s use of the POLO mark. The Complainant has established beyond question the distinctive quality of the POLO mark, as evidenced by registration and use. The Respondent does not deny that he was familiar with the Complainant and the POLO mark when he registered the disputed domain name; in fact, it is clear from the Response that the Respondent registered the disputed domain name in order to attract internet users familiar with the Complainant, its POLO mark and its products to the PoloSportCondoms website.

Prior to his receipt of the Complainant’s cease and desist letter, the Respondent displayed an image of the Complainant’s stylized POLO SPORTS mark on his website, and he made no attempt to disclaim any association with or endorsement of the PoloSportCondoms website by the Complainant. Further, until being contacted by the Complainant, the Respondent offered goods and merchandise for sale on the PoloSportCondoms website, including condoms with which he had associated the Complainant’s POLO SPORTS mark. The Respondent’s website also included links to other online sites such as “www.amazon.com”, where goods competing with those sold by the Complainant are offered for sale.

In view of prior panel decisions such as Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025, the Panel in this case is persuaded that a prima facie showing has been made for purposes of paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See also Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020. Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes for the reasons set forth below that the Respondent has failed to make a sufficient showing under paragraph 4(c)(iii) of the Policy to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent submits no credible evidence that he has been commonly known by the disputed domain name.¹ While the Response presents an argument that a noncommercial fair use of the domain name is being made to parody the Complainant, the Respondent submitted an affidavit with the Response in which he states that his website is “more like a parody of my life”. In fact, the Panel can find no content on the Respondent’s website that would constitute a parody of the Complainant. Instead, the Respondent has used the PoloSportCondoms website to offer for sale various goods and services, and to promote “his stand-up comedy ideas, photography, and lifestyle.”²

As noted above, the Respondent has acknowledged that the disputed domain name incorporates the Complainant’s mark, and that he adopted the domain name for the purpose of attracting to the PoloSportCondoms website internet users familiar with the Complainant, its POLO mark and branded products. While the Respondent claims not to have realized any income from the offering for sale of condoms and other merchandize on his website, he has nonetheless appropriated the Complainant’s mark for this purpose, through his registration and use of the domain name and through the website display of the Complainant’s stylized POLO SPORTS mark on a condom wrapper. This clearly does not constitute a bona fide offering of goods or services within the contemplation of the Policy. Nor, given that the Respondent holds himself out as a professional comedian, can this Panel conclude that the Respondent is making a legitimate noncommercial or fair use of the domain name in connection with a website where he promotes “his stand-up comedy ideas”.

Accordingly, the Respondent has not demonstrated rights or legitimate interests in the disputed domain name under the specific provisions of paragraph 4(c) of the Policy. But the Respondent nonetheless argues that he has rights or legitimate interests in the domain name because “polo” is a common word in which the Complainant cannot assert exclusive rights. The Respondent fundamentally misapprehends the prior decisions under the Policy upon which he relies. Under certain circumstances, a respondent may be entitled to register and use a domain name consisting of a commonly used descriptive word, even where the domain name is confusingly similar to the registered mark of the complainant. See, e.g., Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843. It is clear, however, that the respondent must use the domain names not in the trademark sense but in the descriptive sense. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. In this case, the Respondent has offered no evidence of his use of either “polo” or “polo sports” in the common sense of these words. Rather, the Respondent’s own admissions establish unequivocally that he is using POLO and POLO SPORTS exclusively in their trademark sense.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

The overriding objective of the Policy is to prevent abusive domain name registrations and use for the benefit of legitimate trademark owners, in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

Thus, the Panel notes that the examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Respondent’s own admissions establish beyond doubt that he was aware of the Complainant and the Complainant’ POLO mark when he registered the disputed domain name. In fact, the Respondent acknowledges that his sole purpose in registering the disputed domain name was to attract internet users knowledgeable of the Complainant, its mark and its products to the PoloSportCondoms website, which the Respondent has used to offer for sale various goods and to promote his comedic career. The fact that the Respondent’s use of the website may not be exclusively commercial in nature does not alter this. The Respondent has intentionally used the domain name so as to associate the Complainant’s POLO mark with the sale of condoms and sexually oriented merchandise, and to promote his own comedy ideas and lifestyle, and while the Respondent may consider his use of the domain name in this manner to constitute parody, such use strikes the Panel as little more than an unauthorized exploitation of the Complainant’s mark under the Policy.

Given the totality of the circumstances of this case, the Panel concludes that the Respondent registered the disputed domain name in order to capitalize on and exploit the trademark value inherent in the POLO mark. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and the complainant’s mark or products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy to demonstrate that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <polosportcondoms.com> be transferred to the Complainant.

______________________________

William R. Towns

Sole Panelist

Dated: December 12, 2005

¹ Neither the Respondent’s use of the phrase “polo sports condoms” in his alleged comedy routines, nor his claim to have adopted this phrase at one time as his AOL “handle” is a sufficient showing under paragraph 4(c)(ii).

² Response at p.4.