WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prada S.A. V. Cybershop Co., Ltd

Case No. D2002-0662

 

1. The Parties

The Complainant is Prada S.A. of Lugano, Switzerland.

The Respondent is Cybershop Co. of Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The Domain Name is <pradasports.com> and the Registrar is DotRegistrar.com.

 

3. Procedural History

The Complainant submitted an email copy of its Complaint about the disputed domain name to the WIPO Arbitration and Mediation Center (the "Center") on July 16, 2002, and a hardcopy on July 22, 2002. The Center acknowledged the Complainant's submission on July 17, 2002. The Complaint was filed in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the "Supplemental Rules").

The Center sought verification of the disputed domain name from DotRegistrar.com, on July 17, 2002. DotRegistrar.com's response was received on the same day identifying Cybershop Co., Ltd as the registrant of the disputed domain name and confirming that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the disputed domain name. Also, the Registrar confirmed that the domain name would remain locked during the pending administrative proceeding.

The Center sent the Complaint to the Respondent on July 23, 2002, by hard copy and e-mail and sent copies to the Complainant, ICANN and DotRegistrar.com. The Centerís communication informed the Respondent of a "Notification of Complaint and Commencement of Administrative Proceeding" and that the last day for a response was August 12, 2002.

The Respondent defaulted by not sending a response by the due date and on August 13, 2002, the Center sent a "Notification of Respondent Default" to the Respondent and the Complainant.

On August 16, 2002, the Respondent advised the Center that it would submit a response "shortly". The Center replied on August 21, 2002, stating that it was not able to grant an extension as it was not aware of any exceptional circumstances and that the request was received after the due date for response. However, the Center undertook to forward the request for an extension to the panel if the response was submitted before the panel made its decision.

Following an invitation from the Center to serve as a panelist, the Panel member submitted his "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center on August 21, 2002, and was appointed on August 22, 2002.

The Panel has not received any additional submissions. The Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements including proper notification to the Respondent and the payment by the Complainant of the appropriate fee for a decision by a single panelist.

The proceedings were conducted in English and the Panel's decision was scheduled to be provided to the Center by September 5, 2002.

 

4. Factual Background

The Complainant is a Luxembourg corporation, with its principal place of business in Switzerland. The Complainant's international fashion business was founded in 1913 in Milan, Italy and manufactures luxury womenís and menís clothing and accessories, such as, handbags, luggage, shoes, scarves and leather goods.

PRADA branded products are sold throughout the world through the Complainantís own PRADA boutiques, in-store boutiques of well-known retail outlets and through selective distribution networks. Prada has nearly 100 fully-owned shops in various international cities, such as, Milan, London, Paris and New York. In 2000 its gross annual sales were $US 1.4 billion. Europe accounts for 55% of sales, Asia for 29% and the US for 16%. Prada spends millions of dollars per year on advertising and promoting its famous PRADA trademark.

The Complainant owns trademark and service mark registrations for the mark PRADA in some 100 countries in Classes 3, 5, 6, 8, 9, 10, 11, 14, 16, 18, 20, 21, 23, 24, 25, 26, 27, 28, 34, 35, 41, and 42. These registrations include national registrations for Italy, the country in which the Complainant is found and 30 in South Korea, where the Respondent is domiciled.

The Complainant has registered more than 30 domain names incorporating the PRADA mark, including <prada.com> which was registered in 1997.

On October 30, 2000, the Respondent registered the <pradasports.com> domain name. It currently resolves to a Korean language Web site at <x2shop.co.kr> selling computer products.

On April 10, 2002, Prada sent the Respondent a letter informing the Respondent of its trademark rights in PRADA and requesting that the Respondent transfer its domain name registration to the Complainant. On May 3, 2002, having not received a response from the Respondent, Prada sent a reminder letter. On May 27, 2002, the Respondent responded through its attorney via e-mail stating that the Respondent registered the domain name for its own business purposes and has used it, and "[i]f this domain is really related to your biz, and essential to you, it can not be impossible to negotiate reasonably between you and my client." On May 28, 2002, the Complainant sent an e-mail to Respondentís attorney, requesting an assignment.

On May 28, 2002, the Respondentís attorney responded by e-mail and requested $US 1 million compensation for transferring the subject domain name. There has been no further correspondence between the parties.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that:

- The <pradasports.com> domain name is a total appropriation of the Complainantís famous PRADA mark and is virtually identical to the PRADA mark visually, phonetically and connotatively. Such use of the Complainantís mark in the disputed domain name makes it confusingly similar to the Complainantís PRADA mark.

- It is inconceivable that the Respondent did not have knowledge of the Complainantís famous PRADA mark when registering the domain name <pradasports.com>.

- There is no reason for the Respondent to use the Complainantís trademark PRADA as a domain name other than to misdirect Internet traffic to its Web site or to sell the domain name to the Complainant.

- The Complainant has not licensed, contracted or otherwise permitted the Respondent in any way to use the PRADA mark or to apply for any domain name incorporating the PRADA mark, nor has the Complainant acquiesced in any way to such use or application of the PRADA mark by the Respondent. At no time did the Respondent have authorization to register the domain name <pradasports.com>. Additionally, there is no evidence that shows the Respondent, as either an individual, business, or other organization, has been or is commonly known by the domain name <pradasports.com> or has acquired any trademark or service mark rights in the domain name.

- There is no evidence that the Respondentís use of the domain name <pradasports.com> is in connection with a bona fide offering of goods or services. While the Respondent is using the <pradasports.com> domain name for a Web site that offers for sale various third-party electronic goods, the Respondent does not offer any of the Complainantís PRADA brand goods on its site. Thus, using the Complainantís famous PRADA mark as a domain name for a Web site offering for sale goods unrelated to the Complainant is clearly not a bona fide offering of such goods.

- There is no evidence that shows the Respondent is making a legitimate non-commercial or fair use of the domain name <pradasports.com>, without intent for commercial gain to misleadingly divert consumers or to tarnish the marks at issue so as to create an impression of association with the Complainant. The Respondentís offer to sell the <pradasports.com> domain name to the Complainant for $ 1 million (US) - far in excess of the registration fee for the domain name - clearly shows that the Respondent has registered and is using the <pradasports.com> domain name for "commercial gain."

- The Respondent is operating a Web site at the <pradasports.com> domain name that offers for sale computer products without the Complainantís authorization. There is no evidence that the Respondent is selling genuine Prada brand merchandise. Therefore, the only reason for the Respondent to register and use the subject domain name is to misdirect internet traffic to the Respondentís Web site.

- In view of the fame and distinctiveness of the PRADA mark, it would be impossible, for the Respondent to use the <pradasports.com> domain name as the name of any business, product or service for which it would be commercially useful without violating or tarnishing the Complainantís rights in the PRADA mark.

- The Respondent clearly has no rights or legitimate interests in respect of the domain name <pradasports.com>.

- The Respondent must have been aware at the time of registering the <pradasports.com> domain name that the Complainant was the owner and exclusive rights-holder of the PRADA mark in view of the fame of the mark.

- Without authorization from the Complainant, there is no conceivable use of the <pradasports.com> domain name except to sell it to the Complainant.

- Even if, arguably, sale of the <pradasports.com> domain name to the Complainant was not the Respondentís primary motivation at the time it registered the domain name, it has been its motivation since its letter of May 28, 2002, and since it was notified of the Complainantís trademark rights. Thus, the Respondent is now using the <pradasports.com> domain name in bad faith by its maintenance of the registration and the corresponding Web site for no purpose other than to extort payment from the Complainant.

- The Respondent has undoubtedly used the Complainantís trademark PRADA in its domain name that resolves to its X2SHOP Web site in order to increase the amount of traffic for that site. The harm to the Complainant cannot be balanced by a showing of any legitimate use or potential use by the Respondent, even if it were in good faith. Thus, by intentionally attempting to attract for commercial gain Internet users to its Web site by creating a likelihood of confusion with the Complainantís PRADA mark, the Respondent has registered and used the <pradasports.com> domain name in bad faith.

B. Respondent

Although the Respondent had indicated that it would submit a late response, at the time making its decision the Panel had not received any response. Consequently, the Respondent has failed to provide a response to the Complainant's allegations.

 

6. Discussion and Findings

As the Respondent failed to provide a response to the Complainant's allegations and, in the absence of any exceptional circumstances, the Panel, in accordance with Rule 5(e), will decide the dispute based on the Complaint.

In accordance with the Policy, the Complainant must prove that: (i) the Respondent's domain name is identical or confusingly similar to a trademark 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 Respondent's domain name has been registered and is being used in bad faith.

(i) the Respondent's domain name is identical or confusingly similar to a trademark in which the Complainant has rights

The Complainant's rights in the trademark PRADA are well proven. It has trademarks registered in over 100 countries - the earliest registered in 1962. There are 30 PRADA trademarks registered in the Republic of Korea, the first in 1996 - well before the Respondent registered the disputed domain name. The PRADA trademark, with its extensive and continuous use as well as its many worldwide registrations and international marketing, is by any definition well-known.

The disputed domain name <pradasports.com> is made up of a simple combination of the Complainant's trademark and the word "sports".

Since the commencement of domain name dispute resolution it has been commonly held that the effect of linking a trademark with an ordinary descriptive word does not detract from the trademark itself. See, for example, Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 where 19 domain names incorporated the trademark SONY. In that case the panel held that "neither the addition of an ordinary descriptive word (either as a prefix or suffix)Ödetract from the overall impression of the dominant part of the name in each case, namely the trademark SONYÖ. A reader of any of the disputed domain names would be confused into thinking that it was associated with the complainant". Also, see Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368 where the domain name <pradaboutique.com> was found to be confusingly similar to the PRADA registered trademarks.

Consistent with previous decisions, the Panel agrees that the addition of the descriptive word "sports" does not alter the basic meaning of the disputed domain name and, therefore, finds that the Respondent's domain name is confusingly similar to the Complainant's trademark.

(ii) the Respondent has no rights or legitimate interests in respect of the domain name

The Policy, paragraph 4(c) sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. The ways include, but are not limited to the following:

(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 non-commercial 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".

The Respondent has not provided any information demonstrating its rights or legitimate interests in the disputed domain name.

Based on the information before the Panel it seems unlikely that any of the above ways of demonstrating rights to or legitimate interests in the disputed domain name could possibly be maintained by the Respondent. There is no evidence of using the domain name with a bona fide offering of goods and services. There is no evidence before the Panel that indicates that the Respondent is commonly known by the domain name or that there has been legitimate non-commercial or fair use of the domain name.

As PRADA is an internationally well-known trademark with its branded products sold in the Republic of Korea it is difficult to imagine that the Respondent was not aware of the PRADA reputation and mark when registering its <pradasports.com> domain name. To the contrary the Respondent initially appears to have registered the domain name to intentionally redirected potential Prada customers to its electronic equipment web site and/or sell it to the Complainant.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

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

For the purposes of determining if the Respondent acted in bad faith, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

Currently, the sole purpose of the disputed domain name is to redirect Internet users to the Respondent's web site. It appears that this may have been the case since its registration in October 2000. Once the Complainant contacted the Respondent and requested the transfer of the domain name the initial response was that it was being used but that it would be possible to negotiate its purchase. When pressed to assign the domain name to the Complainant, the Respondent requested $US 1 million compensation, a sum clearly in excess of the out-of-pocket costs related to registering the domain name.

The Complainant has argued that bad faith registration and use is evidenced by the circumstances under paragraph 4(b)(i) and (iv).

The paragraph 4(b)(i) circumstances that evidence the registration and use of a domain name in bad faith are "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 out-of-pocket costs directly related to the domain name."

On the information available to the Panelist there is no evidence that the Respondent's primary purpose of registering the disputed domain name was to sell it to the owner of the PRADA trademark. For almost two years the primary purpose of the disputed domain name registration appears to have been to redirect Internet users to the Respondent's web site. The Respondent did not initiate any contact with the Complainant in that time offering to sell its domain name. However, once the Complainant made contact and requested the domain name to be transferred the Respondent requested compensation. While the sum requested for compensation to assign the domain name is exorbitant, bad faith has not been proven by the Complainant in terms of the Respondent's primary motive for registration being to sell, rent or transfer the domain name to the Complainant.

However, the fact that the disputed domain name does resolve to the Respondent's web site does meet the bad faith circumstances described in paragraph 4(b)(iv). Those circumstances are described as "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

In this case the Complainant has a famous trademark which is used and marketed extensively throughout the world. In the Respondent's country there are 30 registrations alone. It can be inferred that the Respondent would have been aware of the trademark at the time of registering the <pradasports.com> domain name. In the case of Sony Kabushiki Kaisha v. Sin, Eonmok, WIPO Case No. D2000-1007 where, in the absence of any contrary assertion, knowledge of the Complainant's rights in the trademark were imputed at the time of its registration of the domain name. Such imputed knowledge, as well as the fact that the Respondent has no right or legitimate interest in the domain name, suggests bad faith registration with the intent to attract Internet users to its electronic goods web site for some economic benefit.

As mentioned earlier, the Panel is not limited to just the paragraph 4(b) circumstances to determine whether the domain name was registered and used in bad faith. In the Panel's view there are two other factors supporting registration and use in bad faith by the Respondent. First, the Respondent's current holding of the domain name, with or without any commercial gain, in combination with having no legitimate rights or interests in the domain name and the likelihood of being aware of the PRADA reputation and trademark, can be interpreted as bad faith use for the purposes of paragraph 4(a)(iii). Previous decisions support this approach: see, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423.

Second, the act of registering a domain name without developing an active web site has been found to constitute bad faith. Cases involving such bad faith inaction include World Wrestling Federation Entertainment Inc.(WWFE) v. M. de Rooij, WIPO Case No. D2000-0290, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633. In these cases the disputed domain names had not been used for any legitimate purpose, in fact, the lack of legitimate good faith use suggests bad faith.

In view of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

 

7. Decision

In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain name is confusingly similar to the Complainant's trademark, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent's domain name has been registered and is being used in bad faith. Accordingly, the Panel requires the Registrar to transfer the disputed domain name <pradasports.com> to the Complainant.

 


 

Ross Wilson
Sole Panelist

Dated: September 5, 2002