WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRADA S.A. v. Domain Administrator, See PrivacyGuardian.org / Zan zhang

Case No. D2021-1802

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Han Zhang, China.

2. The Domain Name and Registrar

The disputed domain name <fakepradastore.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2021. On June 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 16, 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 17, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2021.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on July 23, 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 Prada S.A., a company from Luxembourg that dates back to 1913, when Mario Prada opened a luxury store in Milan, selling leather handbags, travelling trunks, leather accessories and beauty cases, luxury accessories, and articles of value. Over the years, the Prada Group has developed a strong network of stores, accompanied by franchise stores and a significant presence in selected high-end multi-brand stores and luxury department stores and today operates in 70 countries with approximately 13,988 employees.

The Complainant owns several trademark registrations in many jurisdictions for PRADA, which is widely used and considered as a well-known mark, including the following registrations:

- Italian Trademark Registration No. 362017000069322, filed on July 27, 1977 and registered on July 8, 1978;
- European Union Trademark Registration No. 012443362, filed on December 18, 2013 and registered on May 13, 2014;
- International Trademark Registration No. 650695, registered on December 15, 1995, designating Italy and United States of America.

In addition, the Complainant also owns over 260 domain names consisting of or comprising PRADA, among which <prada.com>, registered on June 9, 1997 and <prada.us>, registered on July 24, 2004.

The disputed domain name was registered on February 15, 2021 and it has been redirected to a website displaying PRADA trademark and advertising images of the Complainant to promote and offer for sale counterfeit PRADA products.

5. Parties’ Contentions

A. Complainant

The Complainant informs that it has registered numerous trademarks comprising the element PRADA and due to the Complainant’s investments in advertising, its marketing and sales worldwide, its consistent use of the mark PRADA for decades, PRADA is considered as a well-known trademark worldwide, including in China, where the Respondent appears to be based.

The Complainant alleges that the Respondent registered the disputed domain name incorporating the Complainant’s trademark PRADA with the addition of the non-distinctive elements “fake” and “store,” which are not sufficient to avoid the confusing similarity with the Complainant’s trademark.

The Complainant mentions that its trademark registrations predate the disputed domain name, that the Respondent is not a licensee, an authorized agent of Complainant or in any other way authorized to use the Complainant’s trademark PRADA. The Complainant adds that the Respondent is not commonly known by the disputed domain name, and that it has no rights or legitimate interests in respect of it.

Furthermore, the Complainant argues that the disputed domain name was registered in bad faith since the Respondent knew the Complainant and its well-known trademarks. The Complainant adds that the Respondent’s purpose in registering the disputed domain name was to capitalize on the reputation of said mark by diverting Internet users seeking products under PRADA mark to its own website, which reproduces the Complainant’s trademarks and images, and offers for sale counterfeit PRADA products defined as “replica” or “imitation.” Also, the Respondent’s website does not display any disclaimer as to the absence of affiliation with the Complainant and fails to provide complete contact information of the website operator.

In addition, the Complainant states that on February 24, 2021 and April 19, 2021 it sent cease and desist letters to the Respondent, as well as a reminder on April 28, 2021, but the Respondent did not provide any answer to them.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

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

A. Identical or Confusingly Similar

The evidence demonstrates that the Complainant is the owner of several registrations for the well-known trademark PRADA in different jurisdictions, as well as many different domain names comprising PRADA, all of them predating the disputed domain name.

The disputed domain name incorporates the famous Complainant’s trademark PRADA in its entirety. The addition of the terms “fake” and “store” does not indeed avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. (Indeed, the use of the word “fake” demonstrates that the Respondent’s intention is to sell fake goods with the Complainant’s trademark as is noted in particular under the subsequent elements).

It is the general view among UDRP panels that the addition of merely dictionary, descriptive, or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s trademark PRADA.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that the disputed domain name resolves to a website advertising and offering for sale counterfeit PRADA products.

The Panel finds that the use of the disputed domain name, which incorporates the famous Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark PRADA is registered by the Complainant in several jurisdictions and has been used since 1913. The disputed domain name incorporates the Complainant’s trademark PRADA and the Complaint demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name.

This Panel has no doubt that PRADA is considered as a well-known trademark worldwide, a status that has even been recognized in several prior UDRP decisions issued in favor of Complainant. Thus, a domain name that comprises such a mark by a party purporting to sell fakes is undoubtedly suggestive of the registrant’s bad faith.

The website corresponding to the disputed domain name displays products bearing the mark PRADA and images of the Complainant’s products for sale with the clear intention to attract, for commercial gain, Internet users to its website, by creating confusion and/or association with the Complainant’s trademarks.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations.

According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark PRADA for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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, <fakepradastore.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: August 6, 2021