WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prada S.A. v. Oleg Filipov-Guevreyan
Case No. DLA2004-0001
1. The Parties
The Complainant is Prada S.A., of Lugano, Switzerland, of Switzerland, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Oleg Filipov-Guevreyan, of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pradaboutique.la> is registered with GAA International / LA Names Corporation.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2004. On February 24, 2004, the Center transmitted by email to GAA International / LA Names Corporation a request for registrar verification in connection with the domain name at issue. On March 3, 2004, GAA International / LA Names Corporation 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 March 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2004. The notification of the Complaint was returned to the Center on March 9, 2004, as an undeliverable e-mail with the information that there was no valid recipient. A hard copy of the Complaint was returned to the Center with the information that the Respondent was not available or the business had closed. Accordingly, the Center notified the Respondent's default by e-mail on March 31, 2004. The notification of default was returned to the Center on March 31, 2004, as an undeliverable e-mail with the information that the account had been disabled or discontinued.
The Center appointed Mary Vitoria, QC as the Sole Panelist in this matter on April 5, 2004. 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.
The Panel reviewed the Complaint and on April 14, 2004, requested the Complainant to file a further submission limited to the issue of the standing of Complainant to bring the action. The Panel noted that the Complainant's address was Lugano, Switzerland but the list of PRADA trademarks (Annex 1 of the Complaint) showed that in most cases the trademarks were in the name of Prada SA of Luxembourg and some were in the name of Prefel SA of Luxembourg. Paragraph 8 of the Complaint stated that the Complainant was the owner of the trademarks. The Panel sought clarification as to the identities of the trademark owners and of the Complainant's claim to ownership. The Complainant was ordered to forward its submission to the Center by April 21, 2004.
The Complainant responded by fax and by e-mail on April 15, 2004. It stated that the company Prefel S.A. changed its name to Prada S.A. on July 31, 1998, and that Prada S.A.'s registered place of business was in Luxembourg, 23, rue Aldringen and that it had a registered place of business at Via Cattori 11, Paradiso, Lugano, Switzerland. Documentary evidence was provided in support.
The Panel is satisfied that the Complainant is the owner of the trademarks set out in Annex 1 of the Complaint and has the necessary standing to bring this Complaint.
4. Factual Background
Complainant is an internationally well-known company in the field of fashion, and the owner of several hundred trademarks including the word PRADA throughout the world, including the USA. Copies of representative trademarks were enclosed with the Complaint.
5. Parties' Contentions
The following is taken from the Complaint.
"(a) The domain name <pradaboutique.la> 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 the company Prada which is famous for its exclusive boutiques throughout the world.
(b) There is no way that Respondent, an individual located in the U.S., where Prada has one of its most significant markets for fashion products and where the Prada group was originally born, may not have been aware of the famous trademark PRADA, and registration could 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 the fact that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve Cliquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163, the Panel noted that "<veuvecliquot.org> is so obviously connected with such a well-known product [VEUVE CLIQUOT 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 Cliquot]. 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 CLIQUOT 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 [UDRP proceeding] against the owner of <pradaboutique.com>, a very significant precedent for this case. In that case the Panel stated that PRADA is such a famous trademark that it may be presumed that Respondent was aware of it (WIPO Case No. D2001-0368). The fact that Respondent "specializes" in registering domain names corresponding to famous European trademarks (see under (d) hereunder), in order to offer through them links to pornographic websites, further confirms his 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 his website; (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 is commercial, and the possibility of a non-commercial fair use is thus excluded.
(d) The domain name is used in bad faith. It resolves in the offer of pornographic services for a fee, under the title tag "Prada Private LA Boutique." 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 website 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), finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith; Youtv, Inc. v. Alemdar (Nat. Arb. Forum case No. FA 94243), finding bad faith where Respondent attracted users through a domain name similar to a trademark it did not own and linked its website to pornographic websites; Oxygen Media, LLC v. Primary Source (WIPO Case No. D2000-0362), finding bad faith even where Respondent merely threatened to develop the domain name in question into a pornography site; Simple Shoes, Inc. v. Creative Multimedia Interactive (Nat. Arb. Forum case No. 0008000095343), according to which "linking a domain name that is identical or confusingly similar to Complainant's mark to a pornographic site is evidence of registration and use in bad faith"; Dell Computer Corporation v. RaveClub Berlin (WIPO Case No. D2002-0601); Six Continents Hotels, Inc. v. Seweryn Nowak (WIPO Case No. D2003-0022), noting that "the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith"; Cattlemens v. Menterprises -Web Development (CPR Case No. CPR0304), concluding that "a pornographic site (...) is [inherently] antagonistic to the legitimate activities of Complainant"; and many others. 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 website. 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. That Respondent operates in bad faith is evidenced by his past registration of several other ".la" domain names identical to, or confusingly similar with, well-known European trademarks, all pointing to pornographic websites, such as, for example, <sparco.la>, <ermenegildozegna.la>, <agnona.la>, <helmutlang.la> and <zegna.la>. In all these cases Panels have decided against Respondent and concluded that he operates in bad faith: see Sparco S.p.A. v. Mr. Oleg Filipov-Guevreyan (case No. DLA2003-0001); Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Oleg Filipov-Guevreyan (Case No. DLA2003-0002); Agnona S.p.A. v. Oleg Filipov-Guevreyan (Case No. DLA2003-0003); Helmut Lang S.a.r.l. v. Oleg Filipov-Guevreyan (Case No. DLA2003-0004; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Oleg Filipov-Guevreyan (Case No. DLA2003-0005)."
The Center's attempts to contact the Respondent resulted in undeliverable e-mail messages and returned documents. There was no response in the case.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and 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 on 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 therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
The domain name <pradaboutique.la> is confusingly similar to the trademark PRADA in which the Complainant has rights in many countries of the world, including the USA where the Respondent is located. The trademark PRADA may be regarded as well-known in these countries. The term "boutique" is a descriptive term which would be understood by the average consumer as indicating the type and style of the premises from which the goods of the Complainant could be purchased. The addition of the descriptive term "boutique" to the well-known and distinctive trademark PRADA does not confer on the combination "pradaboutique" a separate distinctiveness or remove the likelihood of confusion.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name including its trademark.
There is no evidence that the Respondent uses the domain name for his own legitimate commercial or non-commercial activities, if any, nor is there any evidence of any preparations for such use. In fact, when the domain name is accessed it leads to a pornographic website.
Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name <pradaboutique.la>.
The Complainant must satisfy the Panel that the domain name <pradaboutique.la> has been registered and is being used in bad faith.
The name "pradaboutique" is not a descriptive term and has no meaning other than as a boutique operated by or connected with "Prada." Only someone who knew of the well-known trademark PRADA and the fact that it operates boutiques is likely to couple "prada" and "boutique" to form the combination "pradaboutique." The Panel is, therefore, satisfied that the Respondent had knowledge of the Complainant's mark PRADA being well-known in the USA and elsewhere. The Panel is reinforced in this view by the fact that the Respondent has previously registered as ".la" domain names, names identical to or confusingly similar with other well-known European trademarks as identified in the Complaint. It is beyond coincidence that the Respondent could have independently devised these famous trademarks.
The Respondent has used the domain name <pradaboutique.la> as a link to a pornographic website. The Respondent has used the domain name <pradaboutique.la> to attract Internet users to its site in the mistaken belief that it is a website operated or licensed, sponsored or endorsed by the Complainant. The use of the domain name <pradaboutique.la> in connection with a pornographic website is detrimental to and likely to tarnish the reputation of the Complainant's mark.
The Panel decisions cited by the Complainant establish that redirection to pornographic sites from a domain name containing the trademark of another company is, per se, evidence of bad faith. Indeed, there have been at least three Panel decisions against the Respondent concluding that he has operated in bad faith. The Panel has seen no evidence in this case to indicate that a different conclusion should be reached in the present case.
On the facts and the evidence in this case, the Panel finds that the contested domain name has been registered and is being used in bad faith.
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.la> be transferred to the Complainant.
Mary Vitoria, QC
Dated: April 16, 2004