WIPO Arbitration and Mediation Center



Prada S.A. v. Mr. Chuan Sheng Wang

Case No. D2003-0758


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. Chuan Sheng Wang, Taipei, Taiwan, Province of China.


2. The Domain Name and Registrar

The disputed domain name <prada.org> is registered with eNom.


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 eNom a request for registrar verification in connection with the disputed domain name. On October 2, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant as well as being the administrative, billing, and technical contact. The Center verified that 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 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 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 appears to be an Italian registration dated 1978, and there is a registration of PRADA in Taiwan, Province of China.

The Complainant believes that it cannot be seriously disputed that it is and 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

A. Complainant

The Complainant alleges that:

a) The disputed domain name is confusingly similar to the trademark PRADA.

b) There is no way that the Respondent, a company located in the Far East, where the Complainant has one of its most significant markets 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 a similar 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’s website is only a so-called ‘parking page’, offering Internet search services; (ii) the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name PRADA; (iii) any conceivable use which the Respondent might make of a domain name whose ‘heart’ is a trademark as famous as PRADA could only be commercial, thus excluding the possibility of a non-commercial fair use; (iv) The Complainant previously obtained the transfer to itself of the domain name <prada.org> in 2001 (see Prada S.A. v. The NMB Network, WIPO Case D2001-1090) but owing to a communication problem with the company managing its domain name, unfortunately this name was not renewed on time and the Respondent ‘grabbed’ it for himself. The Complainant alleges that this previous case is a valid precedent for the present case.

d) Although the Respondent does not display anything on his website, nevertheless there is a body of significant precedents (led by the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) which have held that, in certain circumstances, a Respondent’s inactivity can amount to a domain name being used in bad faith.

The Complainant asks for the disputed domain name to be transferred to the Complainant.

B. Respondent

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. Preliminary Remarks

The Complainant cites as a precedent a previous UDRP Decision in 2001, as the result of which the same domain name <prada.org> was transferred to itself. This registration was allowed to lapse, and the Complainant explains that this came about as the result of a breakdown in its domain name renewal process. In any case, the Respondent was observant enough to discover this and to re-register the disputed domain name in his own name.

However in the opinion of the Panel this previous case is not a true precedent as the facts were different, and the Panel will not rely upon it.

B. 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 identical to the Complainant’s name and trade mark apart from the suffix ‘.org’. It is customary to ignore this suffix when making a comparison between a trademark and a domain name, so the Panel has no hesitation in finding that paragraph 4(a)(i) of the Policy has been satisfied.

C. 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, 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.

D. Registered and Used in Bad Faith

It should not be overlooked that paragraph 4(a)(iii) of the Policy requires both registration and use in bad faith. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. The case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 was one of the earliest Panel decisions, and it established (at paragraph 7.9) that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." Since this decision was published the concept has been followed by numerous Panels, and the Complainant refers to, and quotes from, many of them.

The question that must always be asked in this type of case is: what are the ‘certain circumstances’ referred to in Telstra, and this can only be answered by reference to the facts of a specific case, and to the Respondent’s behaviour.

At least two of the five circumstances referred to in the Telstra case also apply in the present case, namely:

· the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use;

· it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being passing off or infringement of the Complainant’s rights under trademark law.

The Complainant alleges that the disputed website is nothing but a ‘parking page’ offering Internet search services. The Panel has visited the site and to some extent this is true, but goods and services can in fact be purchased via the site. The opening page calls itself a "Web Search" and, under the banner "For Sale – Contact Us", lists a number of activities under headings such as: Finance, Health, Jobs, Shopping etc. in the form of an Index. When the viewer clicks on any subject he/she is directed to a number of other commercial sites offering services analogous to the heading. It is a sophisticated site but it has nothing to do with the Complainant (although the Complainant’s products and the outlets where they may be purchased can be found under the ‘Shopping’ heading) and it carries no disclaimer as to any possible connection with the Complainant. The site is written in English (not Chinese) and is apparently directed towards customers from the USA. There is no obvious connection with the Respondent who is an individual from Taiwan.

In Telstra and the other cases cited, the conclusion was that "passive holding" of a domain name may amount to use in bad faith, but the Complainant argues, in the alternative, that in this case the holding could be considered as being somewhat active. A visitor to the website at the disputed domain name does not receive an error message, but a page offering various Internet search services. And the Complainant refers to the case of El Rincon del Vago, S.L. y otros v. Nettika, S.L., WIPO Case No. D2000-0823 where it was held that "El mero redireccionamento de una pagina sin contenidos a un sitio web verdaderamente operativo, [es] … considerando … como uso de mala fe" ("A page without contents including a link to a ‘real’ Web page [is] … regarded … as use in bad faith":).

The Panel agrees with this and concludes that the Complainant has proved to his satisfaction that the disputed domain name has been registered and is being used in bad faith.


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 <prada.org> be transferred to the Complainant.



David H. Tatham
Sole Panelist

Dated: November 13, 2003