World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Chen Zhan

Case No. D2011-1779

1. The Parties

The Complainant is Prada S.A. of Luxembourg, Luxembourg, represented by Jacobacci & Associati, Italy.

The Respondent is Chen Zhan of Cheng Du, China.

2. The Domain Name and Registrar

The disputed domain name <prada-online-outlet.com> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011. On October 19, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On October 20, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 20, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.

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 the Respondent of the Complaint, and the proceedings commenced on October 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2011. In an exceptional circumstance, the Center sent out Notification of Extension email on October 31, 2011 to extend the due date for submission of any response by the Respondent in these proceedings by four days, to November 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2011.

The Center appointed Kar Liang Soh as the sole panelist in this matter on November 28, 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

The Complainant is a leading luxury wear and accessories company. The word PRADA is the surname of the Complainant’s founder, Ms Miuccia Prada and has been adopted by the Complainant as the trademark for its products.

The Complainant owns registrations for the trademark PRADA including the following:

Jurisdiction Trademark no Registration date

WIPO 439174 July 8, 1978

China 1159269 March 14, 1998

Products under the trademark PRADA are showcased in many publications around the world including publications like Elle, Esquire, Harper’s Bazaar, In Style USA, In Style China, The New York Times, The Washington Post, Vogue USA, Vogue China, China Daily, Designare Singapore, etc.

The Disputed Domain Name was registered on June 10, 2010. At around the time of the Complaint, the Disputed Domain Name resolved to a website which purportedly provided online store facilities for purchase of handbags, belts, sunglasses, shoes, watches, hats, scarves, shirts and wallets under the trademark PRADA. The website features the trademark PRADA prominently and incorporates the use of photographs which correspond to those appearing in the publications highlighted above which showcased products under the trademark PRADA.

Beyond the Who-Is information and the website associated with the Disputed Domain Name, little is known about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The Disputed Domain Name is confusingly similar to the trademark PRADA. The addition of the non-distinctive combination “online-outlet” in the Disputed Domain Name does not distinguish the Disputed Domain Name from the trademark PRADA;

b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Respondent is not associated with the Complainant and is not part of the Complainant’s distribution network. The Respondent is not commonly known by the Disputed Domain Name; and

c) The Respondent registered and is using the Disputed Domain Name in bad faith. The Respondent’s website uses photographs from the Complainant’s past campaigns for products under the trademark PRADA. The products offered for sale on the Respondents’ website are counterfeits. The Respondent is using the website to deceive consumers that the Respondent is an authorized dealer of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the proceedings

The Complainant requests that the proceedings be conducted in English even though the default language of the proceedings should be Chinese in view of the language of the registration agreement being in Chinese. Having regard to circumstances, in particular the following, the Panel determines that English be adopted as the language of the proceedings:

a) The website resolved from the Disputed Domain Name is entirely in English. The Respondent is clearly proficient in English or has the means to deal adequately with the English language;

b) The Respondent has neither chosen to respond to the Complaint nor made known any preference for the language of the proceedings;

c) The Complainant does not have any Chinese-speaking personnel and the Complaint has already been submitted in English; and

d) There does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should parties be required to re-submit documents in Chinese.

6.2 Discussion

In order to succeed in the proceedings, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy. The Panel proceeds to consider each of these limbs below.

A. Identical or Confusingly Similar

By virtue of the trademark registrations, the Complainant clearly has rights in the trademark PRADA. The Disputed Domain Name incorporates the trademark PRADA in its entirety. The only difference between the Disputed Domain Name and the trademark PRADA is the addition of the suffix “-online-outlet”. Past UDRP panel decisions have developed the principle that generic suffixes or prefixes added to a domain name which incorporates a trademark in its entirety does not serve to distinguish the domain name from the trademark. In the present circumstances, the suffix “-online-outlet” is a combination of generic words which merely refer to the provision of online sales services. In accordance with the many precedents on point, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark PRADA. The first limb of paragraph 4(a) is therefore established.

B. Rights or Legitimate Interests

The Complainant has confirmed that the Respondent is not associated with the Respondent and the Respondent cannot correspondingly claim any authorization from the Complainant to use the trademark PRADA. The Respondent is an individual and there is nothing from the Respondent’s name to suggest that the Respondent is known by as PRADA. The use of the trademark PRADA by the Respondent in relation to the products displayed on the Respondent’s website appears to conflict with the trademark rights of the Complainant (including in China) and cannot be regarded as legitimate without the benefit of explanation by the Respondent. Regrettably, no such explanation exists.

In the circumstances, the Complainant has substantiated a prima facie that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since no response was filed, the prima facie case stands.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides an example of bad faith registration and use as follows:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The evidence shows that the website resolved from the Disputed Domain Name is intended for commercial gain. The trademark registrations for PRADA are many years prior to the registration of the Disputed Domain Name. The Panel note that the photographs of models and products on the Respondent’s website bear an uncanny resemblance to the photographs from the Complainant’s earlier marketing campaigns. The Respondent was clearly aware of the Complainant, the Complainant’s products and, not least of all, the trademark PRADA. The evidence suggests that the Respondent’s awareness extends from before the time at which the Disputed Domain Name was registered.

Based on the evidence submitted, the Panel accepts that the Respondent has an intention to attract Internet users by creating a likelihood of confusion with the trademark PRADA as to the source, sponsorship, affiliation, or endorsement of the website resolved from the Disputed Domain Name and the products thereon. Accordingly, the Complainant has successfully established the third limb of paragraph 4(a) of the Policy by showing that the facts of the case fall within the ambit of paragraph 4(b)(iv).

7. Decision

For 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, <prada-online-outlet.com>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Dated: December 20, 2011

 

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