WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Ms. Mariangela Pautassa

Case No. D2003-0831

 

1. The Parties

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

The Respondent is Ms. Mariangela Pautassa, Bussoleno, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <pradaboutique.net> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2003. On October 20, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 21, 2003, Register.com 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. 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 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 18, 2003.

The Center appointed Stefan Abel as the Sole Panelist in this matter on November 28, 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.

 

4. Factual Background

The Complainant is Prada S.A. of Lugano, Switzerland. The Complainant has exhibited several registrations of the trademark PRADA referring to either Prefel, S.A., Luxemburg, or F.lli Prada di Fernanda e Lucia Prada S.d.f., Milan, Italy. The Complainant has also exhibited a list of several hundred international trademarks PRADA referring to either Prefel, Luxembourg, or Prada S.A., Luxembourg, as the reported owner. The Complainant located in Lugano, Switzerland, is not mentioned in these documents.

The trademarks PRADA are used all over the world for clothing and accessories as shown by advertisements in various international magazines the Complainant has submitted in addition to the trademark registrations.

The Respondent is an individual located in Bussoleno, Italy, who has registered the disputed domain in August 2003. At present, the domain name does not resolve to any active website.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends to be and to have been the owner of the above-mentioned trademarks PRADA for many years. Within that context, the Complainant refers to WIPO Case No. D2001-0368 (<pradaboutique.com>) the Complainant has successfully filed against another respondent.

As to the Respondentís use of the domain name, the Complainant contends that the Respondent has made available a pornographic website offering pornographic images for a fee. The Complainant and his attorneys have visited this pornographic website in August 2003, and the Complainant offers to additionally submit an affidavit in order to back up this statement, if necessary.

The Complainant points out that the trademarks PRADA are most significant on the Italian market. Therefore, the Respondent being an individual located in Italy, she must have been aware of the PRADA trademarks when registering the domain at issue.

The Complainant contends that the domain name at issue is confusingly similar with the trademarks PRADA and that both the former use for a pornographic site and the present inactivity of the domain establish a lack of rights or legitimate interests in respect of the domain name and the bad faith element. In support of these contentions, the Complainant relies on various decisions under the policy.

The Complainant requests that the domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

The Policy provides for a transfer of a domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

- That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name has been registered and is being used in bad faith.

Paragraph 4(c) of the Policy sets out the circumstances which, in particular, but without limitation, shall demonstrate the Respondentís rights or legitimate interests in respect of the domain name.

Paragraph 4(b) of the Policy sets out circumstances which, in particular, but without limitation, shall be in evidence of the registration and use of the domain name in bad faith.

As a result, the Panel is satisfied that all requirements of paragraph 4(a) of the Policy are met for the following reasons and considerations:

A. Identical or Confusingly Similar

It does not escape the Panelís notice that none of the registration forms in respect of the trademark PRADA refers to the Complainant as the reported owner, but to different companies, namely Prefel S.A., Luxembourg, and Prada S.A., Luxembourg. The Complainant also fails to specify and to provide evidence for the way in which he may call upon these trademarks registered for companies who apparently are separate legal entities.

However, the Panel notes that in the former Panel decision in WIPO Case No. D2001-0368 (<pradaboutique.com>) it has been stated that the Complainant is the successor of Prefel S.A. who is the reported owner of several PRADA trademarks the Complainant has referred to. In view of this former decision of May 30, 2001, acknowledging the Complainantís rights in the trademark PRADA, and in view of the fact that Complainantís general allegations of being the owner of the trademark PRADA remained undisputed, there is no reasonable doubt that Complainant is the owner of numerous PRADA-trademarks registered for Prefel S.A. as shown in the registration forms provided by the Complainant.

The trademark PRADA is confusingly similar to the domain name at issue. Confusing similarity can rarely be excluded by adding a generic term. In this case, the trademark is combined with the word "boutique" determining the typical shops where high-quality fashion articles are usually sold. Therefore, the additional word "boutique" cannot be regarded as a distinctive element, but reinforces the impression that the first part of the domain name PRADA refers to Complainantís trademarks that are registered for fashion products.

The Complainant therefore succeeds in meeting the requirements in paragraph 4(a)(e) of the Policy.

B. Rights or Legitimate Interests

The Panel starts from the fact that the Respondent previously has made available under the domain name at issue a pornographic website to be entered upon payment. The corresponding statement of the Complainant has not been disputed and the Complainantís attorneys have offered to submit a corresponding affidavit.

There can be no doubt that such use of the Complainantís trademarks is illegitimate. The trademark PRADA is an internationally well-known trademark for fashion products. There is no logical relationship or any other obvious connection between this well-known trademark in combination with the word "boutique" and a pornographic website. By failing to file a response, the Panel must assume that the Respondent merely seeks to divert users looking for a PRADA website to the Respondentís pornographic website. Other purposes are not apparent. As such use of a famous fashion trademark for a pornographic site obviously tarnishes the trademark ownerís mark, the Panel finds, along with the considerations in WIPO Case No. D2003-0750 (<hackingxbox.com>) that such use of the Complainantís trademark cannot be covered by any rights or legitimate interests. Consequently, the Panel holds that the Complainant has established the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It has been stated above that a legitimate use of a famous fashion brand for a pornographic website is hardly conceivable and appears to serve for the purpose only to intentionally mislead and divert customers looking for an information on PRADA fashion products to Respondentís site. Thus, the Panel finds that bad faith registration as required by paragraph 4(a)(iii) is established (see also WIPO Case No. D2001-1498 - <benettonsportsystem.com>; WIPO Case No. D2003-0750 - <hackingxbox.com>).

Paragraph 4(a)(iii) requires additionally that the domain name is being used in bad faith. With regard to this element, the Complainant is right in pointing out that the present inactivity of the Respondentís website under the domain name at issue does not necessarily exclude this element. It is true that a passive holding of a domain name may satisfy the requirement of paragraph 4(a)(iii) that the domain name is being used in bad faith, when considered in conjunction with other circumstances (WIPO Case No. D2002-0762 - <abeds.com>; WIPO Case No. D2001-0368 - <pradaboutique.com>; WIPO Case No. D2000-0003 - <telstra.org>). The Panel finds that the circumstances in this case lead to such a conclusion for the following reasons:

- The Complainantís trademarks are widely known, perhaps even famous.

- The former use of the domain name had no relation to the Respondentís website except for misleading and diverting potential customers of the Complainant to the Respondentís former website, as set out above.

- The Respondentís former use of the domain name tarnishes the Complainantís trademarks and severely harms their reputation.

- The Respondent has not provided any evidence of any actual or contemplated good faith use of the domain.

Taking into account all of the above, it is not possible to conceive of any plausible legitimate use of the domain name by the Respondent. In particular, by using the domain name for a pornographic site, the Respondent has excluded the abstract possibility of using the domain name for the purposes of marketing Prada fashion products - this - in extremis - might be considered as a legitimate use. In the light of these particular circumstances, the Panel concludes that the Respondentís present passive holding of the domain name in this particular case satisfies the requirement that the domain name "is being used in bad faith" as required by paragraph 4(a)(iii).

Consequently, the Panel holds that both elements of paragraph 4(a)(iii) of the Policy have been met.

 

7. Decision

For all the foregoing reasons, the Panel finds that the Complainant has established each of the three elements of paragraph 4(a) of the Policy. The Panel therefore orders that the domain name <pradaboutique.net> be transferred to the Complainant.

 


 

Stefan Abel
Sole Panelist

Dated: December 12, 2003