WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. 姜帅 (Jiang Shuai), Registration Private

Case No. D2021-4270

1. The Parties

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

The Respondent is 姜帅 (Jiang Shuai), Registration Private, China.

2. The Domain Name and Registrar

The disputed domain name <prada.group> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 the following day, 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 in English on December 22, 2021.

On December 21, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On the same day, the Respondent requested that Chinese be the language of the proceeding.

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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. The Response was filed in Chinese with the Center on January 13, 2022.

On January 22, 2022, the Respondent sent an email communication to the Center querying why notifications in this proceeding were being sent to an email address other than his contact email address in the Registrar’s WhoIs database. The Center replied on January 24, 2022, referring the Respondent to the details provided in the Complaint, including screenshots of a webpage with a contact email address.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 28, 2022. 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 part of the Prada Group, which produces luxury fashion goods. The Prada brand was founded in 1913 by Mario Prada in Milan, Italy. The Complainant holds multiple trademark registrations, including the following:

- Italian trademark registration number 301997900607052 for PRADA, registered on April 12, 2000, specifying goods in classes 14, 16, 18, and 25;
- International trademark registration number 650695 for PRADA in a fancy script, registered on December 15, 1995, designating multiple jurisdictions, including China, and specifying goods in multiple classes;
- Chinese trademark registration number 1260952 for PRADA, registered on April 7, 1999, specifying goods in class 25; and
- Chinese trademark registration number 1263052 for PRADA, registered on April 14, 1999, specifying goods in class 18.

The above trademark registrations remain current. The Complainant and its affiliated companies have also registered many domain names, including the following:

- <prada.com>, registered on June 9, 1997, which it uses in connection with an international website where it provides information about itself and Prada products;
- <pradagroup.com>, registered on December 21, 2001, which it uses in connection with a website that provides information about the Prada Group, which owns the brands Prada, Miu Miu, Church’s, Car Shoe, and Marchesi 1824; and
- <prada.cn>, registered on April 6, 2012, which it uses in connection with a Chinese website where it provides information about itself and Prada products in Chinese.

The Respondent is an individual resident in China. He provides evidence of an account on the Toutiao video-sharing platform named “烹饪阿达PenRenAda”. The account was created 651 days prior to the screenshot in the Response, from which it may be deduced that the account was created in April 2020. The account has over 13,000 followers.

The disputed domain name was registered on May 12, 2020. According to the evidence presented by the Complainant, the disputed domain name formerly resolved to a webpage in Chinese and English advising that it was for sale and providing contact information. The Complainant sent cease-and-desist letters and reminders to the contact address shown on that webpage on December 14, 2020, February 10, 2021, and March 30, 2021. The disputed domain name does not currently resolve to any active webpage; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s PRADA mark.

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

The disputed domain name was registered and is being used in bad faith. The Respondent could not possibly have ignored the existence of the Complainant’s well-known PRADA trademark when he registered the disputed domain name. The Respondent has mainly pointed the disputed domain name to an inactive website.

B. Respondent

The Respondent submits that he has not acted in bad faith since he registered the disputed domain name and that he has never offered it for sale. He disputes the evidence showing a webpage offering the disputed domain name for sale in Chinese and English and suspects that it is fabricated. He alleges that the contact information on that webpage is not his.

The Respondent denies any knowledge of the Prada brand prior to receiving notice of this dispute. He has never bought Prada products and rarely pays attention to luxury goods. He registered the disputed domain name because he operates a personal media channel named “烹饪阿达PenRenAda”, meaning “Cook Ada”. He makes cooking lessons videos for his channel and shares them via accounts on platforms such as Toutiao and Douyin. He formed the name “prada” from the initials of the four characters in the name “PenRenAda”, and the second letter of the last character. He chose the generic Top-Level Domain (“gTLD”) suffix “.group” because it was available and it suited his fans, which form a group. He has 13,900 followers. If the Complainant wanted the disputed domain name, it should have registered it. The Respondent never wanted to use the disputed domain name to ask the Complainant for money; he only registered it for his personal use.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that it would be prejudiced should it be required to translate the Complaint; translation would cause delay; it sent cease-and-desist letters in English to the Respondent; the website at the disputed domain name contained English contents; and the disputed domain name contains Latin characters and an English word.

The Respondent requests that the language of the proceeding be Chinese because he does not understand English well.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint and the amendment to the Complaint were filed in English and the Response was filed in Chinese. The Panel notes that the Respondent explains his choice of the disputed domain name based in part on the English meaning of the gTLD suffix, which indicates that the Respondent is able to communicate in English. In any case, the Panel observes that the Response demonstrates that the Respondent has clearly understood the contentions in the Complaint and been able to present his own arguments regarding the requirements of the Policy. The Panel is familiar with both English and Chinese. Therefore, the Panel considers that requiring either Party to translate its submission would create an undue burden and delay, whereas accepting all submissions in the original language without translation will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that the Panel will accept the Response as filed in Chinese without translation.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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

Based on the evidence presented, the Panel finds that the Complainant has rights in the PRADA mark.

The disputed domain name wholly incorporates the PRADA mark. Its only additional element is a gTLD suffix “.group” which, as a mere technical requirement of domain name registration, may be disregarded in the comparison between the disputed domain name and the Complainant’s trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant submits that the Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s PRADA trademark.

As regards the first and third circumstances set out above, the evidence provided by the Complainant shows that the disputed domain name formerly resolved to a webpage offering it for sale. The disputed domain name is now passively held. Neither is a use in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name that would give rise to rights or legitimate interests in the disputed domain name for the purposes of the Policy.

As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s WhoIs database as “姜帅 (Jiang Shuai), Registration Private”, not the disputed domain name. There is no evidence on the record that the Respondent is commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s arguments, he denies that the disputed domain name ever resolved to the webpage offering it for sale and suspects that the Complainant’s evidence is fabricated. He also alleges that the contact email address shown on the webpage does not belong to him. The Panel has carefully studied the screenshots submitted by the Complainant and cannot identify any signs of fabrication. The screenshots are split in two so as to capture the top and the bottom of the webpage and clearly show the disputed domain name in the browser, the webpage offering the disputed domain name for sale, and the date December 14, 2020. The text on the webpage was generic and did not claim that the contact email address belonged to the registrant; it may well have belonged to a broker or other intermediary. At the same time, the Panel also notes that according to the WhoIs information provided by the Complainant dated July 14, 2020, the disputed domain name was registered with a different registrar showing a different registrant organization name.

The Respondent alleges that he is the operator of a social media channel named “烹饪阿达PenRenAda”. Although he provides evidence of the existence of a social media account of that name, he provides no evidence that he is the registrant of the account or the creator of the content shown on the channel. In any event, the name of the social media account is not “prada”, and there is no evidence that anyone refers to the account registrant or the content creator as “prada”. The account name merely shows that the five letters in “prada” all appear in the transliteration “PenRenAda”, in the same order, but with four other letters interspersed between them. This provides no basis on which to find that the Respondent is commonly known by the disputed domain name. The Respondent does not allege that he has any other right or legitimate interest in respect of the disputed domain name. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

As regards registration, the disputed domain name was registered in 2020, long after the registration of the Complainant’s PRADA mark, including in China, where the Respondent is resident. The disputed domain name wholly incorporates the PRADA mark, which is a name, not a dictionary word. The disputed domain name contains no other element besides the gTLD suffix “.group”. The Complainant has acquired a strong reputation in its PRADA mark in the luxury fashion sector through longstanding and widespread use, including in China. The Complainant also forms part of the “Prada Group” and the disputed domain name, including the gTLD suffix, is identical to that name. The Respondent provides an implausible explanation for his choice of the disputed domain name (see Section 6.2B above). Accordingly, on the balance of probabilities, the Panel finds that the Respondent knew, or should have known, of the Complainant’s PRADA mark at the time that he registered the disputed domain name.

As regards use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has acquired a strong reputation in its PRADA mark in the luxury fashion sector through longstanding and widespread use. The disputed domain name combines the PRADA mark with nothing but the gTLD suffix “.group”, which makes it identical to the name of the Prada Group, of which the Complainant forms part. The disputed domain name gives the false impression that it is associated with the Complainant or the Complainant’s Prada Group and it is likely that it is being held for that reason.

The Respondent argues that the Complainant should have registered the disputed domain name itself if it wanted it. The Panel notes that the Complainant’s failure to register the disputed domain name does not constitute a waiver of its rights or grant implied consent to another party to register it.

Accordingly, the circumstances of this case give the Panel reason to find that the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <prada.group> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 11, 2022