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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Prada/Elite Model

Case No. D2008-0125

 

1. The Parties

The Complainant is Prada S.A., of Luxembourg, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Prada/Elite Model, of China.

 

2. The Domain Name and Registrar

The disputed domain name <topmodel-prada.net> is registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2008. On January 29, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain name at issue. On January 30, 2008, Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification of January 30, 2008 by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 4, 2008. 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 February 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 29, 2008.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 10, 2008. 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.

The language of the proceedings is English.

 

4. Factual Background

The Complainant is Prada S.A., a company active in the international fashion and luxury goods business. The Complainant’s creations are displayed by (top)models in fashion exhibitions and events all over the world.

The Complainant is the owner of the following trademark registrations:

- PRADA, registered with the World Intellectual Property Organization on May 17, 1990, under registration number 556183 (Annex 2, Complaint);

- PRADA, registered with the World Intellectual Property Organization on July 8, 1978, under registration number 439174 (Annex 3, Complaint);

- PRADA, registered with the Office for Harmonisation in the Internal Market (European Community registration) on November 8, 2000, under registration number 271163 (Annex 4, Complaint);

- PRADA, registered with the Italian Intellectual Property Office under registration number 809346 (Annex 5, Complaint);

- PRADA, registered with the United States Patent and Trademark Office on June 29, 2000, under registration number 2,135,219 (Annex 6, Complaint).

The Respondent registered the disputed domain name on November 6, 2007.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademarks. According to the Complainant, its trademarks are famous throughout the world. The Complainant notes that its trademark PRADA has been found famous by previous UDRP Panels.

The Complainant contends that the Respondent has no right or legitimate interest in respect of the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name in connection with offering of escort services, which is illegal in several countries. According to the Complainant, sales of illegal goods or services can never be considered “a bona fide offering of goods or services” or “a legitimate non-commercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the offering of escort services tarnishes its trademark PRADA, since the world-famous trademark PRADA is usually associated with the highest standards of luxury. The Complainant contends that should the trademark be associated with sexual services or prostitution sold via internet, the risk of disparagement is obvious.

According to the Complainant, the Respondent was well aware of the Complainant and its trademarks, because the Respondent chose to register the trademark PRADA in connection with the word “topmodels” and because the trademark PRADA is well known throughout the world.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, since firstly, the disputed domain name incorporates the Complainant’s trademarks in full, and secondly, the word ‘topmodel’ is a generic and descriptive of character. The hyphen between the words “topmodel” and “Prada” does nothing to dispel confusing similarity.

The Panel refers to Prada S.A. v. Michael Faronston, WIPO Case No. D2006-0585, in which the panel found in a similar case, concerning the domain name <prada-baby.net>: “The Domain Name contains the word “prada” and the common English word “baby”, divided by hyphens. The word “baby” in the Domain Name is descriptive in its character and its combination with the highly-distinctive word “prada” clearly refers to offering of fashion products of the Complainant for small children. Therefore, the combination makes the Domain Name confusingly similar to the trademark. Minnesota Mining and Manufacturing Co. v. Mark Overbey, WIPO Case No. D2001-0727.”

B. Rights or Legitimate Interests

The Panel finds that the Complainant has sufficiently demonstrated that the Respondent does not have rights or legitimate interests in the disputed domain name for the reasons discussed below.

The Complainant has not licensed its trademark to the Respondent, nor has it consented to the Respondent’s use of its trademark as part of the domain name and there is no evidence before the Panel in relation to right or legitimate interest in the disputed domain name by the Respondent.

The Panel refers to GAP (Apparel), LLC v. Cher Fang Lim, WIPO Case No. D2005-1165, in which the panel found in a similar case: “It is to be inferred from all the circumstances that the Respondent registered and is using the Domain Name with the primary intention of diverting internet users who intend to seek information concerning the Complainant’s products to its own website offering pornography and other adult services. This is unfairly to take advantage of the Complainant’s goodwill. To the extent that the Respondent is using the Domain Name to offer goods and services, such offering is not bona fide in the circumstances. There is no evidence that the Respondent has been commonly known by the Domain Name, and the circumstances set out in subparagraph (iii) above plainly do not apply; indeed the reverse of those circumstances is true.”

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has registered and uses the disputed domain name in bad faith for the reasons stated below.

The Panel finds that the Respondent was aware of Prada and its trademarks, firstly because the PRADA trademarks are widely known throughout the world and secondly because the disputed domain name is comprised of the Complainant’s trademark in combination with the word ‘topmodels’. It is common knowledge that the creations of the Complainant are regularly being displayed by (top)models.

The Complainant submitted screenshots of the website active under the disputed domain name, which demonstrate the presence of adult content on the website. On the website accessible via the disputed domain name, the services of a so-called “Elite Courtesan” called “Prada” are being offered. The website contains various adult photographs of this “Elite Courtesan”.

The Panel agrees with the Complainants that such content tarnishes the Complainant’s trademarks, which are associated with high standards of luxury goods, and not with escort services.

The Panel finds that, by incorporating the Complainant’s famous trademarks in the disputed domain name, the Respondent has intentionally attempted to attract, for commercial game, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website or the products or services offered.

 

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 <topmodel-prada.net> be transferred to the Complainant.


Wolter Wefers Bettink
Sole Panelist

Dated: March 24, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0125.html

 

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