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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prada S.A. v. Mr. Juno Kim
Case No. D2003-0757
1. The Parties
The Complainant is Prada S.A., Lugano, Switzerland, represented by Studio Legale Jacobacci e Associati, with an address in Torino, Italy.
The Respondent is Mr. Juno Kim, Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <pradaboji.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 25, 2003. On September 26, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On September 26, 2003, Tucows transmitted by email to the Center its verification response providing the contact details for the administrative, billing, and technical contact, and confirming: that the Registration Agreement was in English, that the domain name would remain locked during the course of the Complaint, but stating that the current registrant of the disputed domain name was different to the Respondent. However this supposed registrant was actually the first line of the Respondent’s address and, as the original registrant of the disputed domain name was indeed Mr. Juno Kim, the Center and Tucows agreed through an exchange of e-mails to treat him as the true Respondent.
The Center verified that in all other respects 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 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2003.
The Center appointed David H. Tatham as the sole panelist in this matter on October 31, 2003. 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.
On November 5, 2003, the Panel submitted a request to the Complainant through the Center, under paragraph 12 of the Rules, for clarification of the relationship between the Complainant (who has an address in Switzerland) and the two apparently different companies which, according to the evidence submitted, owned the many trademark registrations of PRADA. These companies are: Prada S.A. and Prefel S.A. both with addresses in Luxembourg. On November 11, 2003, the Complainant submitted a response confirming, with the appropriate documentary evidence, that Prada S.A. has its registered office in Luxembourg with a branch office in Switzerland, and that Prefel S.A. changed its name to Prada S.A. on July 31, 1998.
4. Factual Background
The Complainant is an internationally well-known company in the field of fashion, and it claims to be the owner of several hundreds of trademarks that consist of or include the word PRADA which have been registered or applied for throughout the world. The oldest of these is an Italian registration dating from 1978, and there are two registrations in the Republic of Korea.
The Complainant believes that it cannot be seriously disputed that it is, and that it has been the owner of the trademark PRADA for many years and that this is indeed a famous trademark. Copies of extracts and advertisements from a representative sample of international journals, magazines and newspapers all containing references either to the Complainant or to the name ‘Prada’ were also filed.
5. Parties’ Contentions
The Complainant alleges that:
a) The disputed domain name is confusingly similar to the trademark PRADA. In fact, it combines PRADA with "boji", a Korean word meaning inter alia "vulva" or "vagina", in order to connect the famous trademark PRADA with pornographic services. Non-Korean Internet users, on the other hand, would not understand the meaning of "boji" and would only recognize PRADA as the distinctive part of the domain name.
b) There is no way that the Respondent, a company located in Korea, where the Complainant has a significant market for fashion products, could not have been aware of the famous trademark PRADA. Therefore registration of the disputed domain name can only have occurred in bad faith as it may be presumed that the Respondent knew of the renown of the Complainant’s trademark. Consequently the Complainant calls for a finding of "opportunistic bad faith" and cites a number of UDRP Decisions where this finding was made.
c) The Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular (i) there is no evidence of 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. The Respondent only offers pornographic movies through its Web site; (ii) the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name PRADA; (iii) the use which the Respondent makes of the domain name is commercial, thus excluding the possibility of a non-commercial fair use.
d) The disputed domain name is used in bad faith. "Boji" means "vulva" or "vagina" in Korean and, as could be seen from an Annex to the Complaint, the default page of the disputed domain name resolves to a pornographic page selling porno movies. The consequences for the Complainant, as a prestigious fashion company, are potentially catastrophic, should even a minority of Internet users come to believe that the Complainant is actually associated with the sale of pornography.
The Complainant asks for the disputed domain name to be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prove its case under paragraph 4(a) of the Policy, the Complainant must establish:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identity or Confusing Similarity
The Panel is satisfied with the explanation provided by the Complainant regarding the apparent discrepancies in the ownership of the trademarks, and accepts that the Complainant, either in its own name, or that of its predecessor in business, has extensive and long-standing rights in the name and trademark PRADA. The disputed domain name is not identical to the Complainant’s name and trade mark, but there is no doubt that it is confusingly similar. It incorporates the Complainant’s trademark in its entirety to which has been added a Korean word ‘boji’ The Complainant alleges that this means ‘vulva’ or ‘vagina’ in English although the Panel has not been able to confirm this after looking in several Korean/English dictionaries. However it was confirmed to him by a Korean National that this is indeed a slang word for certain parts of the female anatomy, and that it is a word that is never used in polite society. This is a very unpleasant association, and it is little wonder that this Complaint has been filed.
Numerous Panels have held that if a domain name incorporates a Complainant’s trademark in its entirety, and that if the trademark is well-known or widely used, then it is confusingly similar to that mark despite the addition of other ordinary dictionary words.
Therefore, the Panel finds that the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent lacks any rights to or legitimate interest in the disputed domain name by alleging that the Respondent has never been known by the domain name, and is not making legitimate non-commercial or fair use of the disputed domain name in connection with a bona fide offering of goods or services.
Once a prima facie case is made, the burden shifts to the Respondent to come forward with proof that it does have a legitimate interest in the name. In this case, the Respondent has filed no response so it has made no attempt to counter the Complainant’s allegations.
Therefore, the Panel finds that the Complainant has also satisfied its burden under paragraph 4(a)(ii) of the Policy.
B. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, a number of circumstances are set out which shall be considered as evidence that a domain name has been registered or used in bad faith. In this case there is really only one that is relevant, namely –
"4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain. Internet users to your 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 your web site or location or of a product or service on your website or location."
In this case, the disputed domain name resolves to a site most of which is written in Korean. The Panel is unable to translate this Korean wording on the site, but there is one phrase in Latin characters which reads "http://pornosite.jp". This would seem to be fairly conclusive evidence that the site is a pornographic site.
If the disputed domain name were to come to the attention of a non-Korean national he/she, believing that the site had something to do with the Complainant would be very surprised, but if it were to come to the attention of a Korean national he – or more especially she – would be shocked. Either way, the Complainant’s reputation would suffer.
It has been held in a number of cases that the redirection to pornographic
sites from a domain name incorporating the trademark of another company is,
per se, evidence of bad faith. The Complainant draws attention to a number of
these cases, and in particular to Motorola, Inc. v. NewGate Internet, Inc.
(WIPO Case No. D2000-0079), where it was
said: "while many adult sex sites are perfectly legal and constitute bona
fide offerings of goods or services, the use of somebody else’s trademark as
a domain name (or even as a meta-tag) clearly does not constitute a ‘bona fide’
offering of goods or services when the web site owner has no registered or common
law rights to the mark, since the only reason to use the trademark as a domain
name or meta-tag is to attract customers who were not looking for an adult sex
site, but were instead looking for the products or services associated with
the trademark. Such use of a trademark can create customer confusion or dilution
of the mark, which is precisely what trademark laws are meant to prevent. And
actions that create, or tend to create, violations of the law can hardly be
considered to be ‘bona fide’".
The Panel finds no reason to diverge from this decision, and consequently finds that the Complainant has also satisfied its burden under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <pradaboji.com> be transferred to the Complainant.
David H. Tatham
Dated: November 13, 2003