WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRADA S.A. v. xie xiaomei / zhang yuanyuan / zhou honghai / zhouhonghai / Zhou Hong Hai / Honghai Zhou / deng wen / xie peiyuan / Jianghong Wang / xie caida / liu min / du linmei
Case No. D2016-0799
1. The Parties
The Complainant is PRADA S.A. of Luxembourg, represented by Studio Barbero, Italy.
The Respondents are xie xiaomei of Arizona, United States of America ("United States") / zhang yuanyuan of Georgia, United States / zhou honghai, zhouhonghai, Zhou Hong Hai, Honghai Zhou of Shandong, China / deng wen of Iowa, United States / xie peiyuan of Connecticut, United States / Jianghong Wang of Beijing, China / xie caida of Guam, United States / liu min of Shanghai, China / du linmei of Colorado, United States.
2. The Domain Names and Registrar
The disputed domain names <go-miumiu.me>, <hk365-miumiu.info>, <hk365-prada.info>, <miumiu-hk2012.info>, <miumiu-shoes.com>, <miumiu-shoubiao.info>, <miumiu-xie.com>, <miumiu123-mm8.com>, <miumiu-2012.info>, <miumiu-2013.org>, <miumiu2013.org>, <miumiu2013-tw.com>, <miumiu-2016.me>, <miumiu-2900.com>, <prada-hk2012-2013.info>, <prada-hot.net>, <prada-newyear.com>, <prada-ok.com>, <prada-pp8.info>, <pradashoudai.info>, <prada-zhuanmendian.info>, <prada2012-tw.me>, <prada-2016.com>, <prada-2016.me>, <prada-2900.com> and <shoubiao-prada.info> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 21, 2016. On April 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on May 24, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on June 6, 2016. 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 fashion house. It has worldwide registrations for PRADA and MIU MIU as trademarks around the world including in China. These trademarks include, for example, International Trademark Registration No. 439174 for PRADA, registered on July 8, 1978; Chinese Trademark Registration No. 1260952 for PRADA, registered on April 7, 1999; International Trademark Registration No. 686143 for MIU MIU designating China, registered on December 2, 1997.
The disputed domain names were registered on dates between 2011 and 2015.
The disputed domain names resolve to pages advertising apparently fake PRADA or MIU MIU products or, in the case of <miumiu-2900.com> to the Registrar's landing page. However, in the case of this disputed domain name, it previously also resolved to a page offering apparently fake products.
5. Parties' Contentions
Consolidation of Proceedings
The Complainant requests that the dispute be consolidated against all the Respondents on the basis that there are several commonalities in the WhoIs records of the disputed domain names, including the use of very similar email addresses, the use of the same Registrar and DNS and the pointing of the disputed domain names to substantially identical web sites. The Complainant contends these factors demonstrate that the disputed domain names are under the actual control of a single individual or entity or, at least, reflective of a group of individuals acting in concert.
Identical or Confusingly Similar
The Complainants contend that the disputed domain names are confusingly similar to the trademarks PRADA and MIU MIU because they incorporate the whole of the Complainant's trademarks. The fact that they include non-distinctive elements such as hyphens, numbers (2012, 2013, 2016, 2900, 123, 365, 8), generic terms ("go", "hot", "shoes", "newyear", "ok", "shoubiao" – "wrist watch" in Chinese, "zhuanmendian" – "specialized shop" in Chinese, "shoudai" – "handbag" in Chinese, "xie" – "shoes" in Chinese), geographical indicators ("tw", "hk"), combinations of letters ("mm", "pp") and the generic Top-Level Domains ("gTLD") ".com", ".info", ".net", ".org" and the country-code Top-Level Domain ("ccTLD") ".me", does not affect the confusing similarity.
No Rights or Legitimate Interests
The Respondents have no connection with the Complainant or any of its affiliates and have never sought or obtained any trademark registrations for PRADA or MIU MIU. They, therefore, have no rights or legitimate interests in the disputed domain names.
Registered and Used in Bad Faith
Before acquiring the disputed domain names, it is highly likely the Respondents knew of the Complainant's rights in the marks PRADA and MIU MIU and acquired the disputed domain names to disrupt the business of the Complainant and/or divert business to the Respondents' websites which sell apparently counterfeit products. It is inconceivable that the Respondents were not well aware of the Complainant's trademark rights at the time of the registration of the disputed domain names.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Procedural Issues - Consolidation of Proceedings
The Panel considers that it is fair and equitable in the circumstances of the case to order consolidation as requested. All the disputed domain names do appear to be under the control of one individual or a group acting in concert. See WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.16.
6.2 Substantive Issues
A. Identical or confusingly similar
The disputed domain names are confusingly similar to the Complainant's trademarks PRADA and MIU MIU. They incorporate the Complainant's PRADA or MIU MIU trademarks in full with the addition of generic or geographic terms; numerals; or, a combination of both.
The first part of paragraph 4(a) of the Policy is therefore satisfied.
B. No rights or legitimate interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
"(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondents have not responded to assert any rights or legitimate interests. None of the Respondents are commonly known by any of the disputed domain names.
None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were all registered in bad faith and are being used in bad faith. The Respondents clearly knew of the Complainant when they registered the disputed domain names – they use the disputed domain names to sell apparently counterfeit products of the Complainant.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"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 third part of paragraph 4(a) of the Policy is, therefore, satisfied.
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 names <go-miumiu.me>, <hk365-miumiu.info>, <hk365-prada.info>, <miumiu-hk2012.info>, <miumiu-shoes.com>, <miumiu-shoubiao.info>, <miumiu-xie.com>, <miumiu123-mm8.com>, <miumiu-2012.info>, <miumiu-2013.org>, <miumiu2013.org>, <miumiu2013-tw.com>, <miumiu-2016.me>, <miumiu-2900.com>, <prada-hk2012-2013.info>, <prada-hot.net>, <prada-newyear.com>, <prada-ok.com>, <prada-pp8.info>, <pradashoudai.info>, <prada-zhuanmendian.info>, <prada2012-tw.me>, <prada-2016.com>, <prada-2016.me>, <prada-2900.com> and <shoubiao-prada.info>, be transferred to the Complainant.
Date: June 22, 2016