WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Whois Agent, Domain Protection Services, Inc. / Jack Sparrow

Case No. D2021-1722

1. The Parties

The Complainant is Prada S.A., Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America (“United States”) / Jack Sparrow, China.

2. The Domain Name and Registrar

The disputed domain name <pradabagstmall.com> (“Disputed Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2021. On June 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Nname which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2021, 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 amended Complaint on June 23, 2021.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2021.

The Center appointed Nicholas Weston as the sole panelist in this matter on August 20, 2021. 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 company incorporated in Luxembourg that operates a global fashion business. The Complainant holds a portfolio of registrations for the trademark PRADA in numerous jurisdictions including, for example: International Trademark Registration No. 439174 for PRADA, registered on July 8, 1978.

The Complainant owns the domain name <prada.com>.

The Respondent registered the Disputed Domain Name <pradabagstmall.com> on October 28, 2020. The Disputed Domain Name resolved to a website with products that resemble or compete with the Complainant’s products. At the time of the Decision the Disputed Domain Name resolves to an inactive parking page.

5. Parties’ Contentions

A. Complainant

The Complainant cites trademark registrations including International Trademark Registration No. 439174 for PRADA, registered on July 8, 1978, in classes 14, 16, 18, and 25 and United States Trademark Registration No. 1264243, registered on January 17, 1984, for the mark PRADA, as prima facie evidence of ownership.

The Complainant submits that the trademark PRADA is well-known and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name. It submits, with evidence, that the word “tmall” is a registered trademark owned by a third party. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the PRADA trademark, and that the addition of the generic word “bags”, and the third party trademark “tmall” or the addition of the generic Top-Level Domain (“gTLD”) “.com” are not sufficient to avoid a finding of confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the “Respondent was previously using the Disputed Domain Name in connection with a commercial website which offered and attempted to sell products branded with the PRADA trademark” without licence rights or authorization and the “Respondent is currently using the Disputed Domain Name to redirect Internet users to a website that resolves to a blank page and lacks content” and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame of the Complainant’s trademark.

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 has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the trademark PRADA in the United States and in many countries throughout the world. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the PRADA trademark, the Panel observes that the Disputed Domain Name comprises (a) the Complainant’s trademark PRADA, (b) followed by the word “bags”, (c) followed by the third party trademark “tmall”, and (d) followed by the gTLD “.com”.

It is well-established that the gTLD used as part of a domain name is generally disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc, WIPO Case No. D2021-0859). The gTLD chosen appears to have no special significance in this proceeding. The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name: “pradabagstmall”.

It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the substitution of a letter or addition of words such as, in this case, “bags” and the third party trademark “tmall” (see Hermes International v. Whois Agent, Domain Protection Services, Inc. / Junping Lian, WIPO Case No. D2020-1472 (“The disputed domain name incorporates Complainant’s mark in its entirety with the addition of the terms “bags” and “tmall”. The addition of the descriptive term “bags” refers to Complainant’s products. The term “tmall” refers to the Chinese-language website for business-to-consumer online retail platform, through which Complainant sells brand name goods to consumers in, inter alia, mainland China, Hong Kong, China, Macau, China. The addition of the terms “bags” and “tmall” in the disputed domain name does not avoid confusing similarity”).

This Panel also finds that the addition of the word “bags” and the use of a third-party owned trademark “tmall” does not prevent a finding of confusing similarity of the Disputed Domain Name (see sections 1.8 and 1.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not the Respondent’s name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, and the evidence is that it resolved to a webpage selling products that were either the Complainant’s products or copies of products sold by the Complainant, and at the time of this Decision resolves to an inactive webpage.

The uncontested evidence is that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Nor, alternatively, does paragraph 4(c)(ii) of the Policy apply.

The Panel also finds that the nature of the Disputed Domain Name and the associated website content fails to meet the tests that apply to bona fide offerings or goods or services by resellers or distributors set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it previously resolved to, the Panel is satisfied that the Respondent knew of the Complainant’s trademark PRADA when it registered the Disputed Domain Name (see Prada S.A. v. Mark O’Flynn, WIPO Case No. D2001-0368 (“The Complainant is very well known internationally in the fashion field”).

Further, the composition of the Disputed Domain Name where, as here, it consists of the Complainant’s name and two well-known trademarks, PRADA and “tmall” is in this Panel’s view overwhelming evidence that the Respondent was fully aware of the Complainant when registering the Disputed Domain Name and is clear evidence of bad faith (see Hermes International v. Whois Agent, Domain Protection Services, Inc. / Junping Lian, supra).

In addition, a gap of several years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can, in certain circumstances, be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by more than 42 years.

Further, the Respondent’s putative name, “Jack Sparrow”, is also the name of a pirate character from the “Pirates of the Caribbean” movie franchise, which this Panel accepts as further evidence of bad faith under the Policy (see Philip Morris USA Inc. v. Jack Sparrow, WIPO Case No. D2016-2220).

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name diverted to a webstore that unlawfully offered the Complainant’s PRADA products or, possibly knock-off products, for sale. This Panel finds that such conduct is an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see WIPO Overview 3.0, section 3.1.4).

Further, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (see WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four factors are present in this proceeding.

In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence, and finds that the Respondent has taken the Complainant’s trademark PRADA and incorporated it in the Disputed Domain Name along with the addition of the word “bags”, and the third party trademark “tmall”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the Complainant’s trademark to infringe upon the Complainant’s rights. Further, this Panel finds that the Complainant used a privacy service in an attempt to avoid being held to account for its conduct.

Accordingly, the Panel finds 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, <pradabagstmall.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: September 3, 2021