WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prada S.A. v. Domains For Sale Inc.
Case No. D2002-0512
1. The Parties
Complainant is Prada S.A. represented by Ned W. Branthover, Esq., Robin Blecker & Daley 330 Madison Avenue, New York, NY 10017, United States of America, hereinafter the "Complainant".
Respondent is Domains for sale inc., 5444 Arlington Ave. #g14, Bronx, NY 10471, United States of America, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name in dispute is <wwwprada.com>, hereinafter the "Domain Name".
The registrar for the disputed domain name is Tucows, Inc., 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on May 31, 2002. On June 4, 2002, WIPO sent an Acknowledgement of Receipt of Complaint to the Complainant.
(b) On June 4, 2002, WIPO transmitted a Request for Registrar Verification to the registrar, with the Registrarís Verification received by WIPO on June 4, 2002, confirming that the domain name at issue was registered through Tucows, Inc.
(c) On June 10, 2002, WIPO transmitted a Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for the Policy ("the Supplemental Rules").
(d) No Response has been submitted by the Respondent. Accordingly, WIPO issued a Notification of Respondent Default on July 1, 2002.
(e) In view of the Complainantís designation of a single panelist, WIPO invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, WIPO formally appointed him as Single Panelist. The parties were notified of the Appointment of Administrative Panel on July 16, 2002.
(f) The Single Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is a company founded in 1913 in Italy, operating in the fashion business. The gross annual income for the year 2000 was $ 1.42 billion.
The Complainant has nearly 100 fully owned shops in various international cities, where own-branded products are sold.
Complainant has presented copies of trademark registrations of the mark PRADA in United States of America and in Italy.
Complainant has registered and uses among others the domain name <prada.com> for their services.
The Respondent has registered the domain name <wwwprada.com>.
In April 2002 Complainant sent a letter to Respondent by e-mail, requesting that the Respondent cancelled the registration of the Domain Name. In a response to this letter, the Respondent offered to transfer the Domain Name to Complainant for a compensation of $ 500, -
Respondent has been involved in three previous UDRP proceedings.
5. Partiesí Contentions
The Complainant asserts that:
The domain name <wwwprada.com> is virtually identical and is confusingly similar to Complainantís PRADA trademark and trade name
The Complainant has provided ample evidence of its rights in the famous PRADA mark through its extensive and continuous use, as well as its numerous worldwide registrations.
The Domain Name contains the letters "www" preceding Complainantís trademark, which constitutes a total appropriation of Complainantís trademark and is virtually identical to the PRADA mark visually, phonetically and connotatively.
Respondent has no rights or legitimate interests in the Domain Name
The Complainant adopted and is using the PRADA mark worldwide, and such adoption and use precedes by nearly a hundred years the registration of the Domain Name by the Respondent.
The Complainant has not licensed, contracted or otherwise permitted Respondent in any way to use the PRADA mark or to apply for any domain name incorporating the mark.
There is no evidence that shows the Respondent, as an individual, business, or other organization, has been or is commonly known by the Domain Name, or has acquired any trademark or service mark rights in the Domain Name.
Respondent is using the Domain Name to link to an anti-abortion Web site, and it has been held that such use is not in connection with the bona fide offering of goods or services.
Furthermore, the use by the Respondent of the Domain Name is merely an opportunistic attempt to attract customers via Complainantís famous mark.
Respondent is using the Domain Name to divert Internet users to a Web site that promotes in graphic detail an anti-abortion Web site. The word or trademark PRADA has nothing to do with the subject of abortion rights. Respondent has linked other domain names like <searsroebucks.com>, as well as <wwwpncbank.com> with such sites, and the panelists held that Respondentís use of a domain name in this fashion confuses and diverts Internet traffic, and that such use is not a legitimate use of a domain name.
The Respondent registered and is using the Domain Name in bad faith
Respondentís name is "Domains for sale Inc.", which implies that the Respondent registered the Domain Name primarily for the purpose of selling it. Upon receipt of Complainantís demand letter Respondent replied by offering the Domain Name for $500, which is an amount in excess of registration fees.
Furthermore, Respondent deliberately linked the Domain Name to a morally and politically sensitive Web site in order to force the Complainant to immediately take action so that itís famous mark would not be tarnished.
Furthermore, given the notoriety and fame of Complainantís mark, Respondent is presumed to have had constructive knowledge of Complainantís rights in the PRADA mark when Respondent registered the Domain Name.
The Respondent cannot justify its actions by claiming that the Complainant already maintains a Web site at <prada.com> and thus, it is not precluding the Complainant from registering its trademark as domain name, as this is not a valid justification.
The Respondent has registered another domain name consisting of the prefix "www" and other variations in conjunction with well-known trademarks. Such conduct shows a pattern of bad faith conduct.
Respondent is on a crusade to extort money from trademark owners by linking domain names comprising their famous trademarks to anti-abortion sites whose subject matter is politically, morally, and socially very sensitive. Complainant has nothing to do with abortion rights, and has never taken a stand on this issue.
Respondent is undoubtedly hoping that trademark owners will pay Respondent amounts that are more than Respondentís expenses, but less than the trademark owners legal expenses in order to quickly close down the Respondentís Web sites. In short, Respondent is attempting to extort money by this conduct. Accordingly such conduct constitutes bad faith.
The Complainant requests the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
The Respondent has not submitted a response, and is thus in default. Respondent has neither made any submissions after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests that a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name 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 such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
6.1 Identical or Confusingly Similar to a Trademark or a Service Mark in which the Complainant has rights
Based on the evidence, the Panel finds that the Complainant has rights to the trademark PRADA.
The Domain Name at issue is <wwwprada.com>.
The Panel considers that, as found in several earlier Panel decisions, the suffix .com does not influence on the consideration of similarity.
The Domain Name consists of the three letters "www" and the Complainantís trademark PRADA, and therefore constitutes a total appropriation of Complainantís trademark
The addition of the letters "www", which is an acronym for "world wide web", have no distinguishing capacity, and it is not sufficient to give the Domain Name an individual meaning.
On the basis of these considerations, the Panel finds that the Domain Name is confusingly similar to the Complainantís trademarks.
6.2 Rights or Legitimate Interests in the Domain Name
The Panel has considered the allegations by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name.
The Complainant has not licensed, contracted or otherwise permitted Respondent in any way to use their trademark or to apply for any domain name incorporating the mark.
The Panel agrees that there is no evidence showing that the Respondent has been or is commonly known by the Domain Name, or has acquired any trademark or service mark rights in the Domain Name.
The Panel also agrees that using the Domain Name to link to an anti-abortion Web site cannot be considered as a bona fide offering of goods or services.
As a result of default, the Respondent has not contested the allegations put forward by the Complainant. Neither has Respondent presented any evidence of use or preparations to use the Domain Name in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Registration and Use in Bad Faith
The Panel has considered Complainantís allegations and evidences with regard to the Respondentís registration and use of the Domain Name in bad faith.
Complainant has put forward evidence that his trademarks are well known, and the Panel finds that the trademarks of the Complainant in all probability have been known to Respondent when registering the Domain Name.
Given the Complainantís numerous trademark registrations and its wide reputation with connection with the mark PRADA, it is also hard to conceive that the Respondent could legitimately use the Domain Name.
The Panel agrees that the Respondentís name "Domains for sale Inc.", to some extent implies that the Respondent registered the Domain Name primarily for the purpose of selling it. This is supported by the Respondentís short reply to Complainantís demand letter where Respondent offered to sell the Domain Name for $500.
Respondent has registered other domain names consisting of variations of well-known trademarks, without being able to establish rights to any of them when contested under the UDRP. In the Panelís opinion this shows a pattern of bad faith conduct.
Event though it is not clear that Respondent attempts to attract Internet users to the Web site for commercial gain, the obvious intention to create a likelihood of confusion by adding "www" to the Complainantís trademark in the Panelís opinion constitutes evidence of bad fait.
By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Name in bad faith.
Based on the above discussion, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
The Panel has found that the Domain Name <wwwprada.com> is confusingly similar to a trademark held by the Complainant, and that the Respondent has no rights to or legitimate interest in the Domain Name. The Panel further finds that the Domain
Name has been registered in bad faith, and that it is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the Domain Name <wwwprada.com> be transferred to the Complainant.
Peter G. Nitter
Dated: July 30, 2002