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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. The NMB Network

Case No. D2001-1090

 

1. The Parties

The complainant in this administrative proceedings is Prada S.A, located at 11, Via Cattori, 6902 Paradiso, Lugano, Switzerland, hereinafter the "Complainant", represented by Jacobacci e Associati, with offices at 27, Corso Regio Parco, 10152 Torino, Italy.

The respondent is The NMB Network, with address at P.O. Box 2032, Little River, SC 29566, United States of America, hereinafter, the "Respondent".

 

2. Domain Name and Registrar

The domain name at issue is <prada.org>, hereinafter the "Domain Name". The registrar is eNom, Inc., and the Domain Name was registered on April 25, 2001.

 

3. Procedural History

The WIPO Arbitration and Mediation Center, hereinafter "the Center" received the Complainant's complaint by email on September 3, 2001, and by hardcopy with the exhibits on September 5, 2001.

On September 4, 2001, the Center issued to the parties the Acknowledgement of Receipt of Complaint.

On September 5, 2001, the Center transmitted via email to eNom, Inc., a request for Registrar Verification relating to this case. On the same day, eNom, Inc., transmitted via email to the Center, eNom's Verification Response, confirming that a copy of the complaint has been sent to eNom, that the Domain Name is registered with eNom, and that the Respondent is the current registrant of the Domain Name. It provided the full contact details for the Domain Name registrant, technical, administrative and billing contact. It confirmed that the Uniform Dispute Resolution Policy is applicable and that the current Domain Name status is "registrar-lock".

On September 10, 2001, the Center has verified that the complaint satisfies with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the Supplemental Rules).

On the same day, the Center transmitted to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding and a copy of the complaint via post/courier, facsimile and email.

This notification was also copied to the Complainant via email.

The Center advised that the response was due by September 30, 2001.

On October 2, 2001, having received no response from the Respondent, the Center issued to the email address of both parties a Notification of Respondent Default.

On the same day, the Respondent replied that it was drafting a response.

On October 29, 2001, the Center issued to both parties by email the Notification of Appointment of Administrative Panel in which Mr. Scott Donahey and Mr. Michael Palage were formally appointed as Panelists and Mr. Geert Glas as Presiding Panelist. The projected decision date is November 12, 2001. On October 29, 2001, the Center transmitted to the Administrative Panel the Case File.

On November 17, 2001, the Center received the Respondent's response and, at its request, forwarded it to the Panel on November 21, 2001.

In view of this new element, the Center issued to the Panel an extension of the decision due date.

 

4. Factual Background

Since 1997, the Complainant is the owner of several international registrations of the trademark "PRADA "which cover various countries. It has registered this trademark for goods and services of classes 3, 5, 9, 14, 16, 18, 25, 34, 42. The Complainant is also the owner of a US registration of the trademark "PRADA" for classes 9 and 14 since 1998.

The Complainant has since 1999, registered more than thirty domain names containing the word PRADA.

The Complainant uses the trademark PRADA to distinguish a number of luxury products (e.g. clothing, perfume, jewelry, accessories…).

It can be said that the Complainant's trademark has become, through massive advertising and through the high luxury and quality level of the products it designates, an international strong trademark.

The Domain Name has been registered on April 25, 2001.

The webpage linked to the Domain Name stands for Public Relations And Design Associates but the website is apparently still under construction (We are currently developing our new site, so please click here to access our current site).

However, the only one link on this webpage resolves to the website <www.myrtlebeachhq.com> which apparently is active in the domain names business.

On July 5, 2001, the Complainant sent a cease and desist letter to the Respondent requiring him to deregister the Domain Name.

On July 10, 2001, the Complainant received an answer to its cease and desist letter from the Respondent's attorney.

In this letter, the Respondent's attorney states as follows:

"Our client is in the public relations business and has set up an organization to promote Public Relations and Design Analysis (P.R.A.D.A.) and plans to develop the domain into a public relations forum (even though it is presently acting as a search engine). The domain became available when the registration expired. It is our further understanding that certain domain entrepreneurs from Korea obtained the domain PRADA.NET.

Consequently, our client has no intention of deregistering the domain. However, there is no present use of the PRADA trademark, and there is no intention of such use in the future.

If you wish to consider purchasing the domain, we will seriously consider any reasonable offer. If you elect to file a UDRP claim, rest assured that we will defend it vigorously, that it will cost you $ 1,500 (US) plus legal fees which are not recoverable should you prevail, and there is no guarantee that you WILL prevail."

 

5. Parties’ Contentions

a. Complainant

The Complainant contends that the Domain Name is confusingly similar to its trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It states that there is no evidence of use, or 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; that the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name PRADA, and that considering the notoriety of the Complainant's trademark, the use of the Domain Name can only be commercial thus excluding the possibility of a non commercial fair use.

The Complainant contends that the Respondent has registered the Domain Name in bad faith. It contends that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor. It contends also that its trademark is so famous that it may be presumed that the Respondent was aware of its trademark and that registration has therefore been made in bad faith. Finally, it affirms that a webpage without any content but only a link to a real webpage may be considered as use in bad faith.

b. Respondent

In its late response, the Respondent contends that it has never heard of the Complainant.

Moreover, it alleges that the Domain Name is an acronym that in no way refers to the Complainant's trademark or company or to the fashion industry.

It finally states that it is not acting in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,

(3) that the Domain Name has been registered and is being used in bad faith.

a. Identity or Confusing Similarity

The Domain Name is identical to the Complainant's prior trademark PRADA.

The Administrative Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

b. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name corresponding to its trademark.

There is no indication that the Respondent has registered or used the name "prada" or the acronym "p.r.a.d.a" as a trademark, and no evidence that the Respondent has ever been known by this name.

Moreover, while the Respondent's attorney states in his letter to the Complainant that his client is not using the PRADA trademark and that the acronym PRADA stands for Public Relations and Design Analysis, the website features the name Public Relations And Design Associates. It is unclear whether this Analysis/Associates confusion results from a mere typographical error, or illustrates the need to "create" a credible explanation.

The Respondent does not justify to have made any serious preparation for a normal use of the Domain Name. The Domain Name is currently only used to lead those who access the webpage related to the Domain Name to another website : <www.myrtlebeachhq.com>.

This fact does not as such constitute an obvious illegitimate use and might be justified in certain cases for domain names that are very similar to one's trademark or main domain name, for security reasons or when there is a connection between a domain name and the website featuring one's principal activity (El Rincon Del Vago, S.L. y otros v. NETTIKA, S.L., WIPO Case No. D2000-0823). However, in this case, no such reasons are invoked which could justify such a mechanism.

Therefore the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

c. Registration and Use in Bad Faith

The Complainant's trademark is a strong mark based upon its broad geographical coverage, numerous international trademarks registrations and strongly global consumer recognition. In light of this evidence, it can be presumed that the Respondent was aware of the Complainant's trademark.

Moreover, in its correspondence the Respondent acknowledges clearly the existence of the Complainant's trademark: when stating that "the domain name became available when the registration expired" and "entrepreneurs from Korea obtained the domain PRADA.NET".

Therefore, it appears that the Respondent was aware of the Complainant's trademark and, by knowingly choosing a domain name consisting of the Complainant's trademark, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.

The Respondent states on the webpage related to the Domain Name that its current website is <www.MyrtleBeachHQ.com>. If this is the case, then the Respondent knew that it could not register as a Domain Name, a registered trademark. Indeed, in the "Frequently Asked Questions About Domain Names" section of this website, question 9 states:

"9. When you register a name for me, do you check to see if it's trademarked?

Yes. We check trademarks from an online database before registering any domain name. We do not register trademarked names that are in this database."

The fact that the Respondent's attorney wrote in his letter to the Complainant "If you wish to consider purchasing the domain, we will seriously consider any reasonable offer" illustrates his willingness to sell the Domain Name to the owner of the PRADA trademark. In the above-mentioned letter, the Respondent's attorney states "If you elect to file a UDRP claim, rest assured that we will defend it vigorously, that it will cost you $ 1,500 (US) plus legal fees which are not recoverable should you not prevail, and there is no guarantee that you WILL prevail". This statement is surprising in view of the fact that the Respondent's response which was filed weeks after the deadline is limited to a three paragraphs email. This seems to indicate that the Respondent intended to inflate the price it hoped to obtain for the Domain Name rather than to communicate its conviction as to the merits of its case.

The website related to the Domain Name is featuring a single page and states to be currently under construction. The only active element on this page, is a link to the website <www.myrthlebeachhq.com>. This site is apparently in the domain names business.

The mere fact of redirecting a page without content to another website currently active may be considered as a lack of use (El Rincon Del Vago, S.L. y otros v. NETTIKA, S.L., WIPO Case No. D2000-0823) and therefore, by reference to the Telstra doctrine, as use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In its three paragraphs response, no element or circumstance was invoked which could indicate the good faith nature of its registration and use of Domain Name. As a consequence, the Respondent has failed to demonstrate any bona fide use of the Domain Name.

Considering the lack of interest of the Respondent in the Domain Name, in the defense of his rights and interests as to the Domain Name and the above facts, the Administrative Panel finds that the Complainant has met its burden under section 4(a)(iii) of the Policy and that the Respondent has registered and used the Domain Name in bad faith.

 

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain Name registered by the Respondent is identical to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent’s Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(I) of the Policy, the Administrative Panel requires that the registration of the Domain Name <prada.org> be transferred to the Complainant.

 


 

Geert Glas
Presiding Panelist

Scott Donahey
Panelist

Michael Palage
Panelist

Dated: November 28, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1090.html

 

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