WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Y.B. el Bakkali

Case No. DNL2012-0074

1. The Parties

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

The Respondent is Y.B. el Bakkali of Rotterdam, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <miumiu.nl> (the “Domain Name”) is registered with SIDN through EASYHOSTING // EASYCOLOCATE.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2012. On December 5, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On December 5, 2012, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2012. In accordance with the Regulations, article 7.1, the due date for Response was December 27, 2012. The Respondent sent an email communication to the Center on December 12, 2012. On the same date, the Center acknowledged receipt of the Respondent’s email communication and informed the Respondent that if no further communication or Response would be received by the due date for Response, the email communication of December 12, 2012, would be regarded as the Response. On January 3, 2013, the Center notified the Parties that no further communication or Response was received by the due date for Response, and that SIDN would commence the mediation process. On January 7, 2013, the Center received an email communication from the Respondent indicating that its email of December 12, 2012, constituted its Response.

On January 9, 2013, SIDN commenced the mediation process. On February 5, 2013, SIDN extended the mediation process until March 10, 2013. On February 21, 2013, SIDN informed parties that the dispute had not been solved in the mediation process.

The Center appointed Willem Hoorneman as the panelist in this matter on March 6, 2013. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is part of the Prada group of companies, active in the high fashion industry and in particular (well) known for the design, manufacturing, distribution, licensing and sales worldwide of fashion items, such as leather hand bags, shoes, accessories and eyewear, under the brand names PRADA and MIU MIU.

The Complainant is holder of the following trademarks (the “Trademarks”):

- the International Registration, designating the Benelux, of the word mark MIU MIU, with registration no. 593101, registered on October 16, 1992 for goods in classes 18 and 25;

- the International Registration, designating the Benelux, of the figurative (stylized letters) mark MIU MIU, with registration no. 598396, registered on October 29, 1992 for goods in classes 3, 14, 18 and 25;

- the Community word mark MIU MIU, with registration no. 4253191, registered on February 16, 2006 for goods in classes 18 and 25;

- the Benelux word mark MIU MIU, with registration no. 613351, registered on June 4, 1997 for goods in classes 6, 9, 14, 16, 19, 20, 21, 24 and 26;

- the Benelux word mark MIU MIU, with registration no. 613355, registered on June 4, 1997 for goods in class 3;

- the Benelux figurative (stylized letters) mark MIU MIU, with registration no. 613464, registered on June 4, 1997 for goods and services in classes 3, 9, 14, 16, 18, 25, 34, 41, 43 and 44;

- the Benelux word mark MIU MIU, with registration no. 645649, registered on March 1, 1999 for goods in classes 3, 18 and 25;

- the Benelux figurative (stylized letters) mark MIU MIU, with registration no. 695122, registered on January 4, 2001 for services in class 35; and

- the Benelux figurative (stylized letters) mark MIU MIU, with registration no. 771109, registered on August 11, 2005 for services in class 35.

The Complainant is also commercially active on the Internet operating a website under the domain name <miumiu.com> and an online store under <store.miumiu.com> through which its goods and services are also offered and advertised. In addition, it has registered several other domain names comprising or containing the name “miu miu” under several different TLD extensions.

The Domain Name was registered by the Respondent on November 12, 2007. The Domain Name directs to a so-called parking page of a webhosting company, indicating that the Domain Name has been reserved.

5. Parties’ Contentions

A. Complainant

The Complainant indicates that the MIU MIU brand was named after Ms. Miuccia Prada, president and stylist of the company, and was created as a brand with an autonomous identity from PRADA. Since then, MIU MIU has evolved into one of the leading high fashion brands in the world, with Europe still being one of the most relevant markets for the company. Strong editorial coverage of MIU MIU, featured prominently on hundreds of covers of the most important fashion magazines worldwide, contributes to the visibility of the MIU MIU products, with a remarkable number of press results dedicated to MIU MIU also in the Netherlands.

The Complainant contends that the Domain Name is identical to its Trademarks. Furthermore, the word “miu miu” is not descriptive and does not have an ordinary meaning in the Dutch language. Also, the Domain Name is very similar to the Complainant’s domain name <miumiu.com>, which directs to the Complainant’s main web portal where its MIU MIU branded products are advertised and offered for sale, as well as its other “miu miu” domain names.

The Complainant claims that the Respondent has no rights to or legitimate interests in the Domain Name. According to the Complainant, the Respondent has not provided any evidence of its use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services before the Complainant notified the Respondent. The Respondent has simply passively held the Domain Name since its registration. The Complainant indicates that the Respondent is not a licensee or authorized agent of the Complainant or in any other way authorized to use the Trademarks. The mere registration does not establish rights or legitimate interests in the Domain Name. Furthermore, the Respondent is not commonly known under the Domain Name as an individual, business or other organization. Also, the Respondent did not reply to the cease and desist letters sent by the authorized representatives of the Complainant.

The Complainant asserts that the Domain Name has been registered or is being used in bad faith. The Complainant claims that, in light of the intensive use of the Trademarks since 1992, the Respondent must have been familiar with the Complainant’s well-known Trademarks at the time of registering the Domain Name. The Complainant points out that MIU MIU has indeed been recognized as a famous trademark in various UDRP panel decisions, such as Prada S.A. v. Liu Wan Qiu / Amanda Clavier, WIPO Case No. D2011-0091 concerning the domain name <miumiutasche.com>. Also, according to the Complainant, the non-use for a long time of the Domain Name while the Trademarks are well known evidences bad faith. Furthermore, the Complainant states that the Respondent’s false address indicated in the WhoIs domain name register is an additional element evidencing bad faith. Notwithstanding such false information, the Respondent certainly received the cease and desist letter that was sent by the Complainant to the registrar. The Respondent’s failure to respond thereto can also be regarded as evidence of bad faith.

B. Respondent

The Respondent indicates to have registered the Domain Name with the intention of using it for a toy store. The Respondent claims that the Domain Name “sounded as a child language” to it, that the Respondent’s “little nephew made this sound” and that the Respondent liked it. According to the Respondent, it never realized the toy store due to financial problems, but it would still like to open this store in the future.

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations, the Complainant’s request to transfer the Domain Name must meet three cumulative conditions:

a. The Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

b. The Respondent has no rights to or legitimate interests in the Domain Name; and

c. The Domain Name has been registered or is being used in bad faith.

The Respondent may demonstrate such rights or legitimate interests on its part inter alia through the circumstances mentioned in article 3.1 of the Regulations. The Complainant may provide evidence that the Domain Name has been registered or is being used in bad faith inter alia through the circumstances mentioned in article 3.2 of the Regulations.

A. Identical or Confusingly Similar

The Complainant has based its Complaint on the Trademarks and has submitted copies of its trademark registrations demonstrating that it is the holder of the Trademarks. The Trademarks are protected under Dutch law.

It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark or trade name on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

Further, the only difference between the Domain Name and (the word elements of) the Trademarks is the lack of interspacing between the elements “miu” and “miu”, where interspacing cannot be part of a domain name at all. As for the rest, the Domain Name is textually (and therefore visually and phonetically) identical to the Trademarks.

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks.

B. Rights or Legitimate Interests

It follows from both the Complaint and the Response that the Respondent was and is not commonly known by the Domain Name. The Respondent admits that it was and is not (yet) known under this name. The record further does not include any indication that the Respondent has any relevant trademark or trade name rights regarding the term “miumiu”.

Although the Respondent claims to have had, and to still have, the intention to start using the Domain Name in the future for purposes of a toy store, leaving aside the question whether such use would qualify as a bona fide commercial offering of goods or services, the Respondent has not provided any evidence of demonstrable preparations to such use of the Domain Name.

The Domain Name is not, and has never been, actually used by the Respondent. The Domain Name links to a parking page of a webhosting company, indicating that the Domain Name has been reserved. Absent any contrary evidence from the Respondent, its passive holding of the Domain Name does not constitute a legitimate noncommercial use of the Domain Name (see: Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483).

The Response does not show that the Respondent has any rights to or legitimate interests in the Domain Name, whereas the Complaint plausibly establishes the contrary.

Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in the Domain Name.

C. Registered or Used in Bad Faith

The registrations and use of the Complainant’s Trademarks predate the registration and use by the Respondent of the Domain Name by many years. As the Complainant owns trademark rights effective and enforceable in the Netherlands and has submitted proof of various instances of use in the Netherlands, while the Domain Name is in the “.nl” domain space, the Panel deems it highly likely that the Respondent was aware of the Complainant’s Trademarks when registering the Domain Name. Also, the Respondent has not denied this in its Response.

The apparent lack of any active use (i.e. for the Domain Name to resolve to an active website) of the Domain Name without any active attempt to sell or to contact the trademark holder (so-called ‘passive holding’ by the Respondent) does not as such prevent a finding of bad faith. On the contrary, the specific cumulative circumstances in this case in which the Domain Name is identical to the (undisputedly well-known) Trademarks of the Complainant and in which the Respondent has provided no evidence whatsoever of any actual or contemplated good-faith use by it of the Domain Name, are indicative of bad faith on the part of the Respondent in its registration and/or use of the Domain Name (see: The Coca-Cola Company v. P. Engbers, WIPO Case No. DNL2012-0037, concerning the domain name <minutemaid.nl>).

In addition, the lack of any response by the Respondent to the cease and desist letter sent to it by the Complainant, as well as the incorrect contact details of the Respondent in the WhoIs register, are further circumstances suggesting bad faith on the part of the Respondent. Also, the Panel finds the explanation provided by the Respondent in its Response as to how it came up with the domain name (i.e. alleged baby language) rather implausible, but need not address this further here.

On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <miumiu.nl> be transferred to the Complainant.

Willem Hoorneman
Panelist
Date: March 27, 2013