19th Jul 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRL USA Holdings, Inc. v. iTournament, LLC
Case No. DBIZ2002-00022
1. The Parties
Complainants, PRL USA Holdings, Inc., is a Delaware corporation located in Wilmington, Delaware, United States of America.
Respondent, iTournament, LLC, is located in New York, New York, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <polo.biz> (the Domain Name).
The registrar is Dotster, 11807 N.E. 99th Street, Suite 1100, Vancouver, Washington 98682, United States of America.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2002.
The Response was received on May 21, 2002.
Mark V. B. Partridge was appointed Sole Panelist on June 12, 2002.
The Panel finds that the actions of WIPO comply with the Start-Up Trademark Opposition Policy for .biz (“STOP”), the Rules for Start-Up Trademark Opposition Policy (“STOP Rules”) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (“WIPO Supplemental STOP Rules”) applicable to this proceeding.
4. Factual Background
Complainant is the owner of the POLO trademark used in connection with apparel, home furnishing and related goods and services under the control of the fashion designer Ralph Lauren. The mark is famous in the fashion world and is the subject of many trademark registrations owned by Complainant.
Respondent is a web site developer. One of its projects is iTournament, a network of online gaming sites dedicated to Internet play for cash in many popular sport and games of skills. In support of its plans for the development of this network, Respondent has submitted an affidavit of its president, A. Murat Croci, an Internet entrepreneur; a detailed Business Plan; the current homepage for the iTournament site; and registration records for various domain names based on sports and games of skill: e.g., <basketballtournament.com>, <horseshoes.biz>, <bocce.biz>, <motorcross.net>, and others. The iTournament web site currently solicits the interest of potential subscribers. Interested parties are invited to register and identify their favorite game. One of the featured choices is polo. Recently, Respondent was the successful applicant for the Domain Name.
5. Parties’ Contentions
Complainant contends that the Domain Name is identical to a mark in which Complainant has rights; that the Respondent has no right or legitimate interest in the Domain Name; and that the Domain Name was registered in bad faith.
Respondent contends that it has a demonstrable business plan to use the Disputed Domain Name and registered the Domain Name in good faith to provide Internet gaming services related to the game of polo.
6. Discussion and Findings
Respondent admits that the Domain Name is identical to a mark in which Complainant has rights.
With respect to Respondent’s lack of right or legitimate interest, Complainant points our the undisputed fact that Respondent is not known by the name, is not currently making fair or noncommercial use of the name, and is not using the name in connection with a bona fide offering of goods or services.
Respondent does not deny these points, but submits that it has a legitimate interest in the name because it has made demonstrable plans to use the Domain Name in its generic sense referring to the game polo and not to the Complainant’s mark or to the world of fashion where Complainant’s mark is distinctive.
Respondent relies heavily on the fact that “polo” has a generic meaning and therefore should be free for Respondent to register. I do not agree with Respondent’s argument to this extent and I depart from those cases cited by Respondent in which the potential generic nature of the domain name per se has been accepted as a defense.
The mere fact that a domain name may have a generic character does not mean that the Respondent necessarily has a legitimate interest in the use of the Domain Name. Many famous marks may also have a potentially generic use, but that does not make them fair game for cybersquatting. Instead, even in the instances of domain names that have a potentially generic meaning, it is incumbent on the Respondent to show that it uses or has a demonstrable plan to use the Domain Name in a legitimate, non-infringing manner. If the facts are insufficient to such use or plan, the potentially generic nature of the name is not a defense. See J.Crew International v. crew.com, WIPO Case D2000-0054; Madonna v. Parisi, WIPO Case No. D2000-0847. On the other hand, where such use or plan is demonstrated, it is appropriate to find that the Respondent has a legitimate right or interest in the domain name within the scope of the dispute resolution policy. See Rollerblade, Inc. v. CBNO & Ray Redican, Jr., WIPO Case No. D2000-0427; Wm. Grant & Sons v. Daniel Scotto, WIPO Case No. D2000-1656.
Given these principles, I believe the case turns on Respondent’s demonstrable preparation for the creation of its Internet gaming site. A finding of lack of right or legitimate interest is appropriate if the alleged plan is not demonstrable, J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035; or is merely a sham, Advanced Internet Technologies, Inc. v. AIT, Inc., WIPO Case No. D2000-0597.
Here, the evidence of Respondent’s plan to use the Domain Name in a legitimate manner consists of its president’s affidavit, a detailed business plan, the current iTounament web page, and fund raising efforts. The plan is also supported by the other domain names registered by Respondent relating to sports or games of skill. Complainant has not presented evidence to show that these plans are merely a sham.
Based on the evidence presented, I find that Complainant has not demonstrated that Respondent has a lack of legitimate right or interest in the Domain Name. Give this failure to prove a necessary element of the case, it is unnecessary to consider the remaining element of bad faith.
For the reasons stated above, Complainants’ request for transfer of the Domain Name <polo.biz> is denied. Based on the record, it appears Respondent has a legitimate interest in the Domain Name. Therefore, according to STOP paragraph 15(e), the Panel decides that no subsequent challenges under STOP against the domain name shall be permitted.
Mark V.B. Partridge
Dated: July 19, 2002