World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. lin

Case No. D2012-1554

1. The Parties

The Complainant is Prada S.A., Luxembourg, Luxembourg, represented by Studio Barbero, Italy.

The Respondent is lin, dalian, China.

2. The Domain Name and Registrar

The disputed domain name <prada-shopping.com> (“the Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2012. On August 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 2, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on August 13, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 17, 2012.

The Center verified that the Complaint together with the amendment to 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 August 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2012.

The Center appointed Karen Fong as the sole panelist in this matter on September 20, 2012. 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 an Italian luxury goods company that sells its products under the brand name PRADA. The brand dates back to 1913 where the Complainant’s predecessors in title opened a luxury store in Milan selling handcrafted leather goods including handbags, travelling trunks and leather accessories. The Complainant is now one of the most famous luxury fashion brands and has extended its original range of leather goods to include footwear, fashion apparel, eyewear, fragrances, mobile telephones. The Complainant now operates in 70 countries including China where it has retail stores in Beijing, Chengdu, Dalian (where the Respondent is supposedly based), Guangzhou, Hangzhou, Harbin, Qingdao, Shanghai, Shenyang, Shenzhen, Tianjin, Wenzhou and Xian.

The Complainant owns numerous trade mark registrations for the mark PRADA world wide including in China where it has registrations for the PRADA word mark, the PRADA Logo and PRADA in Chinese characters. The earliest of the registrations for the PRADA trademarks date back to 1978.

The Complainant also owns almost 150 domain names incorporating its PRADA trade mark including <prada.com> and <pradagroup.com>. Most of the Complainant’s domain names are redirected to the website at “www.prada.com”. The Complainant sells its products on-line through its e-store connected to <prada.com>.

The Domain Name was registered on September 16, 2011. It is connected to a website (“the Website”) in the Japanese language which bears the Complainant’s PRADA trade marks and images taken from the PRADA official website. The Website offers for sale and sells counterfeit PRADA products. A customer who had purchased a PRADA branded product from the Website was delivered a counterfeit product together with a letter declaring that a company called Lint Trading Co. Ltd. was an authorised “sale agent” of Prada SA on the Internet. A Quality Control Inspector of the Complainant examined the product and confirmed that it was a counterfeit.

The Respondent has failed to respond to the cease and desist letter and follow up reminders sent by the Complainant’s legal representatives prior to the filing of the Complaint. The Respondent is or has also been the owner or is somehow connected to domain names which incorporate other famous brands including <prada-japan.com>, <gucci-jp.net>, <chanel-japan.com>, <celine-japan.com> and <5finger-japan.com>, <moncler-toyko.com>, <prada-bag.net>, <miumiu-japan.com>, <timberland-tokyo.com>, <louisvuitton-japan.net> and <burberry-jp.com>. Many of these domain names are connected to websites that appear to sell counterfeit products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the PRADA trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

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

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

(iii) The Domain Name was registered and is being used in bad faith.

B. Preliminary Procedural Issue – Language of the Proceedings

The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.

The Complainant submits in Section IV of the Complaint that the language of the proceedings should be English as the Respondent is familiar with the English language. The Complainant contends amongst other things that the Domain Name is registered in English rather than Chinese script. The Domain Name also includes the English term “shopping”. Further the Website also includes the use of English terms. The Panel notes that the website is in English, Chinese and Japanese. The letter accompanying the counterfeit product purchased on the Website was written in English.

The Panel accepts the Complainant’s submissions regarding the language of the proceedings and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceedings by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings.

C. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights to the name PRADA through use and registration that pre dates the Domain Name’s registration.

The Domain Name integrates the Complainant’s registered trade mark PRADA with the common and descriptive term “shopping” and the generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the descriptive term “shopping” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the PRADA trade mark in the Domain Name. E.g. N.V. Organon Corp. V. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. V. Wu bingjie aka bingjie wu / Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.

The Panel finds that the Domain Name is confusingly similar to the PRADA trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.

D. Rights or Legitimate Interests

The Complainant contends that the Respondent has not been licensed or authorized by the Complainant to use the PRADA name. Further the Respondent is not commonly known by the Domain Name. The Complainant has submitted a signed letter from its Quality Control Inspector confirming that the product purchased by a customer from the Website is counterfeit. There can be no legitimate interest in the sale of counterfeits. The Complainant has satisfied its burden of production of showing that the Respondent lacks rights or legitimate interests in the Domain Name. (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. 2005-0552 and Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572)

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

E. Registered and Used in Bad Faith

To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent was aware of the Complainant’s famous trade mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the PRADA trade mark registrations.

The very incorporation of the Complainant’s trade mark in the Domain Name and the display of the Complainant’s trade marks and counterfeit products on the Website confirm the Respondent’s awareness of the trade marks. Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.

The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website are counterfeit PRADA products for reasons set out in paragraph 6D. The use by a respondent of a domain name which includes a well known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v Domains for Life, WIPO Case No. 2004-1019).

In addition, the Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The website contains the Complainant’s PRADA trade marks and images from its official website. Further, the Respondent failed to respond to the cease and desist letter and follow up reminders from the Complainant’s representatives. Such behavior is inconsistent with what one would expect from a good faith registrant accused of cybersquatting. (See Bayerische Motoren Werke AG v. This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.

The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

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 Domain Name <prada-shopping.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Dated: October 8, 2012

 

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