WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Artie Johson, Private

Case No. D2011-0605

1. The Parties

Complainant is Prada S.A. of Luxembourg, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.

Respondent is Artie Johson, Private of Kakabeka, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <pradahandbags.com> (“Disputed Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2011. On April 5, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On the same day, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on April 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 29, 2011.

The Center appointed Michael A. Albert as the sole panelist in this matter on May 11, 2011. 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 in these proceedings is Prada, S.A., a leading company in the field of luxury wear, leather accessories, shoes, luggage and hats (“Prada”). Prada is the surname of Prada’s founder, Ms. Miuccia Prada.

According to the non-contested allegations provided by Complainant, Complainant is the owner of the trademark PRADA and all other trademarks in the PRADA family of marks in a number of jurisdictions around the world (collectively, the “PRADA Marks”). The PRADA trademark was registered in the European Union on July 8, 1978 and then followed with various international registrations and EU Community Trademarks.

Over the years, Prada has devoted substantial resources and efforts to building goodwill in PRADA Marks, which are used in connection with the sale of Prada’s luxury products throughout the world. The PRADA brand is distinctive and famous.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Respondent registered and is using the Disputed Domain Name in bad faith.

Complainant is the owner of a number of PRADA trademarks and common law rights associated therewith throughout the world. Complainant’s PRADA Marks are in use by Complainant for luxury wear, leather accessories, shoes, luggage and hats. Further, Complainant contends that its PRADA Marks are famous.

Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s PRADA Marks. Further, Complainant contends that the Disputed Domain Name creates confusion by combining PRADA, Complainant’s famous mark and its corporate name, with a descriptive word, “handbags”. Complainant also contends that the addition of the word “handbags” only adds to the confusion created by the Disputed Domain Name, as handbags are one of Complainant’s core products.

Complainant contends that Respondent is neither using nor preparing to use the Disputed Domain Name in connection with a bona fide offering of goods. Further, Complainant says that while the website is not currently active, Respondent’s use of the Disputed Domain Name is in bad faith, as it was secured in a misleading manner to attract consumers looking for genuine Prada goods. Further, Complainant says that while the Disputed Domain Name is not currently active, it has been used by Respondent in the past to redirect customers to websites offering for sale counterfeit Prada goods. Complainant contends that this use is neither a legitimate noncommercial use nor a fair use of the Disputed Domain Name.

Further, Complainant contends that the passive holding of the Disputed Domain Name should be regarded as evidence of bad faith, as Complainant has no control over its content and it prevents Complainant from registering and using it in the future.

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant suggests, as evidence of Respondent’s bad faith, that it is inconceivable that Respondent did not know of Complainant or the PRADA Marks when registering the Disputed Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain a decison that a domain name should be cancelled or transferred:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Here, Respondent provided no response, and the deadline for so doing expired on April 28, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

Complainant has provided sufficient evidence that it is the owner of valid and subsisting international registrations and rights at common law for the PRADA Marks. Complainant’s registrations for the mark in various jurisdictions and the Office for Harmonization in the Internal Market (OHIM) registrations have proven this. The worldwide use of the mark reinforces this ownership.

The Disputed Domain Name, however, is not identical to any of the PRADA Marks. Therefore, the first issue is whether the Disputed Domain Name and the PRADA Marks are confusingly similar.

The Disputed Domain Name combines three elements: (1) Complainant’s PRADA mark; (2) the term “handbags”; and (3) the suffix “.com”. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “pradahandbags”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.

Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).

Moreover, the addition of the term “handbags” as a suffix to the PRADA mark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the PRADA Marks because the term “handbags” is descriptive. The addition of a descriptive term does not negate the confusing similarity between the PRADA Marks and the Disputed Domain Name. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (finding <dellaustralia.com> confusingly similar to DELL); Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (finding <telstraaustralia.net> confusingly similar to TELSTRA). Similar conclusions have been reached whereby the descriptive “handbags” has been added to a well-known mark. See Chanel, Inc. v. Hu, Huzou, Hpahg, WIPO Case No. D2010-0283 (finding <chanelhandbags.org> confusingly similar to CHANEL).

Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name. See Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091. Applying the test described in described in Yell Limited, supra, the overall impression of the trademark in the present case is that it is a reference to Complainant or to Complainant’s PRADA Marks. As the Disputed Domain Name uses the mark PRADA, it is confusingly similar to Complainant’s PRADA Marks.

For all of the foregoing reasons, this Panel finds that the Disputed Domain Name, <pradahandbags.com>, is confusingly similar to Complainant’s PRADA Marks in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by showing that:

(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the PRADA name or any of Complainant’s PRADA Marks, or variations thereof, in connection with Respondent’s business or as part of the Disputed Domain Name. Complainant has thus made a prima facie case showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.

Complainant has provided uncontroverted evidence that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine “Prada” products. Prior UDRP panels have found that such offerings are not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (finding no bona fide use where <pfizerforwomen.com> redirected to online pharmacy); see also Clad Holdings Corporation v. Kentech, Inc, a.k.a. Spiral Matrix a.k.a. Titan Net, WIPO Case No. D2006-0837 (“[n]or does the Respondent appear to be using the domain names in relation with a bona fide offering of goods or services […] The Respondent only appears to provide links leading to websites unrelated to the Respondent where ALL-CLAD products or competing products may be purchased.”)

For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service offered on Respondent’s website.

It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See, Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433. Here, while the site is currently inactive, Respondent has used the Disputed Domain Name to attract Internet users to websites which redirect users to sites offering counterfeit Prada products for sale. The Panel finds that this use is in bad faith.

Further, the Panel finds that the passive holding of the Disputed Domain Name should be regarded as evidence of bad faith, as Complainant has no control over its content and it prevents Complainant from registering and using it in the future. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel held that the passive holding of a domain name amounted to bad faith.

Further, the Panel finds compelling circumstantial evidence that Respondent likely knew of Complainant and Complainant’s PRADA Marks when it registered the Disputed Domain Name. Complainant has been using its PRADA Marks for decades and has trademark registrations throughout the world for PRADA. Further, Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the PRADA Marks and that these marks are famous. Taken together, these facts make it likely that Respondent knew of Complainant’s marks and unlikely that Respondent innocently registered the Disputed Domain Name without such knowledge.

Respondent’s knowledge of Complainant and Complainant’s PRADA Marks is strong evidence of bad faith. Based on the foregoing, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its […] trademarks.”); Société Air France v. R Blue, WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)

For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy.

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 Disputed Domain Name <pradahandbags.com> be transferred to Complainant.

Michael A. Albert
Sole Panelist
Dated: May 23, 2011