WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRADA S.A. v. Wang Changhong

Case No. D2013-0582

1. The Parties

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

The Respondent is Wang Changhong of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <pradaphonebylg.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2013. On April 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2013.

The Center appointed Brigitte Joppich as the sole panelist in this matter on May 22, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is part of the PRADA group of companies, which also includes Prada S.p.A., a well-known Italian fashion label specializing in luxury goods for men and women, founded in 1913 by Mario Prada. Today, the Complainant operates in 70 countries, including China, where the Complainant is present through a directly controlled company and retail stores located in Beijing, Chengdu, Dalian, Guangzhou, Hangzhou, Harbin, Qingdao, Shanghai (where the Respondent is located), Shenyang, Shenzhen, Tianjin, Wenzhou and Xian. The Complainant markets its products on the Internet inter alia at “www.prada.com” and is registered owner of almost 150 domain names consisting of or comprising the word PRADA. One of the Complainant’s current products is a smartphone designed by the Complainant and produced by LG Corp.

The Complainant owns numerous trademark registrations for PRADA, inter alia International trademark registration no. 439173 PRADA, registered on July 8, 1978, Community trademark registration no. 271163 PRADA, registered on November 8, 2000, Chinese trademark registration no. 1238335 PRADA, registered on January 14, 1999, Chinese trademark registration no. 1260952 PRADA, registered on April 7, 1999 and Chinese trademark registration no. 1263052 PRADA, registered on April 14, 1999 (hereinafter referred to as the PRADA Marks).

The disputed domain name was registered on April 4, 2011 and is used in connection with a parking website showing advertising links to third parties’ websites, including links to competing products and dating websites.

On January 14, 2012, the Complainant sent a cease and desist letter to the Respondent requesting inter alia to cease use of the disputed domain name and to transfer the disputed domain name to the Complainant. The Respondent did not respond to the merits of the Complainant’s cease and desist letter and the subsequent reminders sent on March 27, 2012, May 28, 2012 and July 2, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain name is confusingly similar to the PRADA Marks as it fully incorporates such trademarks and as the non-distinctive elements “phone”, “by” and “LG” (a third party trademark registered in the name of LG Corp.) does not affect the confusing similarity. On the contrary, the addition of the terms “phone by LG” is particularly apt to increase the likelihood of confusion as it directly refers to the smartphones designed by the Complainant and produced by LG Corp., thus inducing Internet users to believe that there is an association or affiliation with the Complainant.

(2) The Respondent has no rights or legitimate interests in the disputed domain name as it has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute, as the use of the disputed domain name in connection with a parking website can neither be considered as bona fide under the Policy nor as a legitimate noncommercial or fair use, as the Respondent is not a licensee or an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s PRADA Marks, and as the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization.

(3) The disputed domain name was registered and used in bad faith. With regard to bad faith registration, the Complainant states that in light of the intensive use of the famous PRADA Marks since as early as 1913 and the worldwide amount of advertising and sales of the Complainant’s products, the Respondent could not possibly ignore the existence of the Complainant’s trademark when it registered the disputed domain name. With regard to bad faith use, the Complainant contends that the Respondent’s use of the disputed domain name is in bad faith under paragraph 4(b)(iv) of the Policy as the Respondent intentionally attracted Internet users for commercial gain to its web site by creating a likelihood of confusion with the Complainant’s PRADA Marks. The Complainant argues that a finding of bad faith is further supported by the facts that the Respondent’s address indicated in the WhoIs database is clearly incomplete and that the Respondent has failed to reply to the Complainant’s cease and desist letter.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and

(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.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s highly distinctive and well established PRADA Marks.

The additional terms “phone”, “by” and “LG” do not hinder a finding of confusing similarity. Firstly, the terms ”phone” and “by” are merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of generic terms, such as “phone” or “by” (cf. Motorola Trademark Holdings, LLC v. Michael Fournier, WIPO Case No. D2012-1990 (<motophones.com> et al.); QNX Software Systems Limited v. Jing Rung, WIPO Case No. D2012-1597 (<qnx-phone.com>); O P I Products, Inc. v. Li Wang/Wang A/Wang, Lin Yu/Yu Lin, Yuanzhen Zou/Jiang Zheng, WIPO Case No. D2012-2514 (<nailpolishbyopi.com> et al.); Milliken & Company v. Carpet Values Distributing, NAF Claim No. 257085 (<rugsbymilliken.com>)). Secondly, the fact that the third party trademark “LG” is included in the disputed domain name does not eliminate the similarity between Complainant’s trademark and the disputed domain name either. The Panel notes that LG Corp. produces smartphones designed by the Complainant. Therefore, the combination of the trademarks PRADA and LG in the disputed domain name strengthens the likelihood of confusion as it directly refers to the Complainant’s cooperation with LG Corp.

Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent 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; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the 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 or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The Respondent used the disputed domain name in connection with a parking website. In the present case, such use does not constitute rights or legitimate interests under paragraph 4(c)(i) of the Policy.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and the intent to capitalize on the fame of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. Given that the Respondent registered a domain name which precisely describes one of the Complainant’s products (“PRADA phone by LG”), it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.

As to bad faith use, by fully incorporating the PRADA Marks into the disputed domain name and by using the disputed domain name in connection with a parking website providing links to third parties, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references).

The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith and consequently finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name <pradaphonebylg.com> be transferred to the Complainant. This transfer is ordered without prejudice to any rights that might be asserted by LG Corp.

Brigitte Joppich
Sole Panelist
Date: May 28, 2013