WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prada S.A. v. Ms. Stefanella Campo
Case No. D2003-0839
1. The Parties
The Complainant is Prada S.A., Lugano, Switzerland, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Ms. Stefanella Campo, Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <pradaboutique.org> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2003. On October 22, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On October 24, 2003, Wild West Domains, Inc. 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 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2003.
The Center appointed Knud Wallberg as the sole panelist in this matter on December 2, 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
Complainant is an internationally well-known company in the field of fashion, and the owner of several hundreds of trademarks including the word PRADA throughout the world, including in Italy. Copies of representative trademarks were enclosed with the Complaint.
5. Parties’ Contentions
The following is taken from the Complaint:
a) The domain name <pradaboutique.org> is confusingly similar with the trademark PRADA. In fact, it combines PRADA with "boutique", a generic word in the fashion field. In fact the combination of "PRADA" and "boutique" maximizes the confusion, and the result may only indicate that company Prada which is famous for its exclusive boutiques throughout the world.
b) There is no way that Respondent, an individual located in Italy, where Prada has one of its most significant market for fashion products and where the Prada group was originally born, may not have been aware of the famous trademark PRADA, and registration may only have occurred in bad faith; when it may be presumed that "the Respondent (…) knew of the renown of the Complainant’s trademarks", a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157: here, the Panel found that Respondent, as "an Italian citizen" could not have ignored that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve Clicquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, the Panel noted that "‘VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product [VEUVE CLICQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith." In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, it was also suggested that " the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Clicquot]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark ." Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLICQUOT or CHRISTIAN DIOR, it was decided that "the Respondent knew of or should have known of the Complainant’s trademark and services at the time it registered the domain name XPEDIATRAVEL.COM, given the widespread use of the Complainant’s EXPEDIA website" (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137.) Furthermore, we would stress that Prada succeeded in a previous ICANN procedure against the owner of <pradaboutique.com>, a very significant precedent for this case, and that in this case the Panel stated that PRADA is such a famous trademark that it may be presumed that Respondent was aware of it (Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368). Additionally, respondent "specializes" in registering domain names similar to famous Italian trademarks, such as <leccepen.info> (Annex 10), <cellulase.info> (Annex 11), <astispumante.info> (Annex 12), <essenzadizegna.nu> (Annex 13), further evidence of her bad faith.
c) Upon information and belief, Respondent has no rights or legitimate interests in respect of the 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. Respondent only offers pornographic images for a fee through her Web site; (ii) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name PRADA or PRADA BOUTIQUE; (iii) the use which respondent makes of the domain name is commercial, and the possibility of a non-commercial fair use is difficult to conceive.
d) The domain name is used in bad faith. The page at "www.pradaboutique.org" resolves in the offer of pornographic services connected to oral sex for a fee. As the Panel stated in the case Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079, "while many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a ‘bona fide’ offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be ‘bona fide’. That redirection to pornographic sites from a domain name incorporating the trademark of another company is, per se, evidence of bad faith has been confirmed by several Panel decisions; see e.g. Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370, Youtv, Inc. v. Alemdar, National Arbitration Forum Case No. FA 94243, Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, Simple Shoes, Inc. v. Creative Multimedia Interactive, National Arbitration Forum Case No. 95343), Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601, Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022, and Cattlemens v. Menterprises –Web Development, CPR Case No. CPR0304.
e) All the above decisions refer to cases as clear as the present one was of "pornosquatting", where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic Web site. In particular: (a) a trademark the "pornosquatter" does not own is used; (b) the site to which the user is redirected is obviously pornographic; (c) the site is commercial, i.e. in order to access further pornographic services the Internet user is invited to pay.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.
A. Identical or Confusingly Similar
The domain name <pradaboutique.org> is confusingly similar to the trademark PRADA, in which the Complainant has rights in many countries all over the world, including Italy, where the Respondent is located. The trademark must be considered well-known in these countries. The addition of the descriptive term "Boutique" to the distinctive trademark PRADA does not exclude confusing similarity, the more as this term will easily be understood by consumers as a "location" where products of the Complainant are offered for sale.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
Further, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain name for its own legitimate commercial or non-commercial activities, if any, and it has not demonstrated any preparations for such use. On the contrary, the domain name leads to a pornographic website.
No response was filed in the case the Respondent must bear the consequences of not having given an explanation of any possible prior rights or legitimate interests in the domain name.
Based on the above and in the absence of any submission of the Respondent, the Panel concludes that the Respondent has no right or legitimate interest in the domain name <pradaboutique.org>.
C. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
The name "Pradaboutique" is not in itself a generic or descriptive term. The Panel is therefore convinced that the Respondent had knowledge of the Complainant’s mark PRADA, being well-known in Italy and elsewhere.
As mentioned, the Respondent used the domain name < pradaboutique.org > as a link to a pornographic website. Thus it directed visitors to this website. By such use the Respondent intentionally attempted to attract Internet users, expecting to arrive at a website of the Complainant, to another on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location. That behaviour is detrimental to the reputation of the Complainant’s mark. With the registration of the domain name < pradaboutique.org >, the Respondent has also prevented the Complainant from registering the name.
Given the facts and evidence of the case the Panel finds that the contested domain name has been registered and is being used in bad faith. Reference is made to inter alia Samsung v. Tristar, WIPO Case D2003-0746 and Prada v. Mark O´Flynn, WIPO Case No. D2001-0368.
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 <pradaboutique.org> be transferred to the Complainant.
Dated: December 15, 2003