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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. the peace company

Case No. D2006-1404

 

1. The Parties

The Complainant is Prada S.A., Paradiso, Lugano, Switzerland, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is the peace company, Edogawa-ku, Tokyo, Japan.

 

2. The Domain Name and Registrar

The disputed domain name <pra-da.com> is registered with Enom, Inc. dba Dynames.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2006, by e-mail and on November 7, 2006, in hard copy. On November 13, 2006, the Center transmitted by email to eNom, Inc. dba Dynames.com, Inc. a request for registrar verification in connection with the domain name at issue. On November 13, 2006, eNom, Inc. dba Dynames.com, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 15, 2006. The Center verified that the Complaint, together with the amendment to 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 November 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2006.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on December 18, 2006 (the “Panel”). 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, amongst others, of the following trademark registrations:

TRADEMARK	REG. No.	Class (Int’l)	DATE OF REGISTRATION	COUNTRY
PRADA	556183	03, 05	May 17, 1990	International (covering 10 countries)
PRADA	439174	14, 16,18, 25	July 8, 1978	International (covering 43 countries)
PRADA	1985225	03, 06, 08, 10, 14, 18, 21, 25, 26	September 21, 1987	Japan
PRADA	809346	14, 16, 18, 25	July 8, 1978	Italy
PRADA	2135219	09, 14	February 10, 1998	USA

The disputed domain name <pra-da.com> was registered on December 19, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

- That it is an internationally well-known company in the field of fashion, and the owner of several hundreds of trademarks including the word PRADA registered throughout the world (copies of its trademark registrations of the trademark PRADA are appended to the Complaint).

- That PRADA is a famous trademark and a household name for millions of consumers throughout the world (copies of some press articles relating to said trademark are attached to the Complaint).

- That the domain name <pra-da.com> is confusingly similar to the trademark PRADA. The insertion of a dash between ‘PRA’ and ‘DA’ does not avoid the confusion, and a visit to the website “www.pra-da.com” shows that confusion is precisely what Respondent is seeking.

- That the site is devoted to offering a range of PRADA products, some of which do not appear to be genuine.

- That the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular 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.

- That the Respondent only offers unauthorized (and very possibly counterfeit) PRADA products through its Web site; that the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name PRADA or PRA-DA; and that the use which respondent makes of the domain is commercial (although illegal), and the possibility of a non-commercial fair use is thus excluded.

- That there is no way that the Respondent, a company located in Japan, where the Complainant has one of its most significant markets for fashion products, was not aware of the famous trademark PRADA. Registration can only have occurred in bad faith (the Complainant cites Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157, Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 to argue that the fame of the Complainant generates “opportunistic bad faith” on the side of Respondent).

In this context the Complainant also cites Expedia, Inc. v. European Travel Network WIPO Case No. D2000-0137, to state that, even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than the marks cited in the preceding paragraph, it was decided that “the Respondent knew of or should have known of the Complainant’s trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainant’s EXPEDIA website.”

- That the Complainant has succeeded in several procedures held under the Policy, including Prada S.A. (formerly Prefel S.A.) v. Mark O'Flynn WIPO Case No. D2001-0368), in which the Panel stated that “PRADA is such a famous trademark that it should be presumed that Respondent was aware of it”.

That the domain name is used in bad faith. It resolves to a website which offers unauthorized and/or counterfeit PRADA products. Even if the Respondent was offering only genuine PRADA products (which is very unlikely) or was an authorized PRADA distributor (which it is not), using a domain name confusingly similar to PRADA, in order to attract Internet traffic, gives it an unfair advantage towards hundreds of genuine and authorized PRADA retailers throughout the world and particularly in Japan

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:

(i) the domain name in question 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 in respect of the domain name, and

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

In the administrative proceeding, the Complainant must prove that each of these elements are present.

As the Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The Complainant has submitted evidence showing the existence of trademark registrations for PRADA around the world. Said evidence includes a Japanese document, which corresponds to the alleged jurisdiction of the Respondent.

This Panel admits the uncontested affirmations made by the Complainant, regarding the widespread publicity and recognition of the trademark PRADA. Moreover, this Panel agrees with Prada S.A. v. Michael Faronston, WIPO Case No. D2006-0585, Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019, Prada S.A. (formerly Prefel S.A.) v. Mark O'Flynn WIPO Case No. D2001-0368 and a considerable number of “PRADA” cases brought under the Policy, in which the respective Panels have found that the trademark PRADA is famous.

The Complainant’s products bearing the trademark PRADA are sold in Japan, where the Respondent is allegedly domiciled.

The disputed domain name <pra-da.com> is confusingly similar to the Complainant’s trademark PRADA. This Panel agrees with Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684, regarding <s-m-i-r-n-o-f-f.com>, in that “The addition of dashes between the letters of a single word does not alter the way the Domain Name is pronounced and cannot, in context, differentiate it from the same word absent the dashes.”

To carry into effect the similarity analysis, a Panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409).

Therefore this Panel finds that the domain name is identicalor confusingly similar to the Complainant’s trademark. The first requirement of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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. (paragraph 4(c) of the Policy).

The Respondent has not submitted evidence showing its preparations to use the disputed domain name with a bona fide offering of goods or services, nor has the Respondent proved that it has been commonly known as <pra-da.com>, or that it is making a legitimate noncommercial or fair use of the disputed name.

The Respondent has not contested the Complainant’s statements and evidence arguing illegitimate, commercial use of the disputed domain name.

Panels acting under the Policy have held that registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name to the Respondent, but rather indicates bad faith under paragraph 4(c) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Medisite S.A.R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179 and V&S Vin & Sprit Aktiebolag v. Kownacki, NAF Case No. 95079).

Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the contested domain name <pra-da.com>. The second requirement of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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 website or location or of a product or service on your website or location.

The Complainant’s mark PRADA is famous and well publicized internationally. Japan is no exception. The Complainant has argued and proved that it holds trademark rights in Japan regarding PRADA, and that said trademark is known extensively in Japan, as well as the products covered by said mark.

The Respondent is allegedly domiciled in Japan, according to the WHOIS information relating to the contested domain name.

The Respondent registered a domain name that is confusingly similar to the mark PRADA, which mark has been found by this and other Panels to be famous. Registration of a famous trademark in a domain name by a party other than the trademark owner, without authorization and absent legitimate rights or fair use exceptions, constitutes bad faith registration (see Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489).

The Respondent has not rebutted Complainant’s allegations or evidence stating that the disputed domain name resolves to a site where unauthorized and/or counterfeit PRADA products are offered.

Following Prada S.A. v. Michael Faronston (mutatis mutandis), WIPO Case No. D2006-0585 (supra), this Panel finds that the Respondent was probably aware of the Complainant’s trademark and its goodwill at the time of registration of the disputed domain name, and that the Respondent’s primary purpose in registering and using the contested name was to attract, for commercial gain, Internet users to the Respondent’s Web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Web site to which the disputed name resolves and the products featured on said site (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408. See also Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157, Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

In light of the above, this Panel finds that the contested domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met.

 

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 <pra-da.com> be transferred to the Complainant.

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Kiyoshi I. Tsuru
Sole Panelist

Dated: January 1, 2007