Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Prada S.A. v. Domains For Life [2005] GENDND 19 (27 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Domains For Life

Case No. D2004-1019

1. The Parties

The Complainant is Prada S.A., of Lugano, Switzerland, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Domains For Life, New York, New York, United States of America.

2. The Domain Name and Registrar

The Domain Name at issue is <wwwprada.com>. This Domain Name is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2004, by e-mail and in hardcopy.

The Acknowledgement of Receipt of the Complaint was sent by the Center to the Complainant on December 3, 2004. On December 3, 2004, the Center sent a Request for Registrar Verification by e-mail to Intercosmos Media Group d/b/a directNIC.com. On December 3, 2004, the Center received from Intercosmos Media Group d/b/a directNICcom., its response by e-mail confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact.

On December 8, 2004, the Center, confirmed that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Registration Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). On December 8, 2004, the Center, in accordance with the Rules, paragraphs 2(a) and 4(a), formally notified the Respondent of the Complaint, and commenced the proceedings.

The Respondent failed to file any Response to the Complaint by December 28, 2004, the due date for Response under the Rules, paragraph 5(a). Accordingly, the Center sent a Notification of the Respondent’s Default to the parties on January 3, 2005.

The Center appointed Teruo Doi as the sole panelist in this matter on January 13, 2005. 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.

On January 13, 2005, the Center sent to the Panelist the Case File by e-mail and in hardcopy by courier, setting January 27, 2005, as the Projected Decision Date under the Rules, paragraph 15(b).

4. Factual Background

The facts stated in the Complaint are as follows:

(1) The Complainant is an internationally well-known company in the field of fashion, and the owner of several hundred trademarks including the word PRADA throughout the world. (provided in Annex 1 of the Complaint). In order to limit the number of enclosures, copies of representative trademarks are attached to the Complaint:

- Italy IR No. R556183 (Annex 2);

- Italy IR No. R439174 (Annex 3);

- Luxembourg IR No. R681403 (Annex 4);

- US Registration No. 2,135,219 (Annex 5);

- US Registration No. 2,098,660 (Annex 6);

- US Registration No. 1,264,243 (Annex 7).

(2) The Complainant is and has been the owner of the trademark PRADA for many years. It is indeed a famous trademark as a cursory AltaVista or Google search under “prada” would easily confirm, and as it is shown by copy of representative international press enclosed in the Complaint (Annex 8). That PRADA is a household name for millions of consumers and synonymous of luxury fashion is confirmed by the presence in the United States of America best sellers’ list of the novel “The Devil Wears Prada” by Lauren Weisberger.

5. Parties’ Contentions

A: Complainant

The Complainant states, in paragraph 8 of the Complaint, that the Complainant is an internationally well-known company in the field of fashion, and the owner of several hundreds of trademarks including the word PRADA registered throughout the world. Copies of representative trademark registrations of PRADA are attached to the Complaint. The Complainant asserts that the trademark PRADA is a famous trademark and a household name for millions of consumers throughout the world and attaches copies of some press articles to the Complaint.

On the basis of these facts, the Complainant requests the Administrative Panel issue a decision to effect the transfer of the Domain Name, <wwwprada.com>, to the Complainant, in accordance with Paragraph 4(b)(i) of the Policy, on the following grounds:

(1) The Domain Name, <wwwprada.com>, is confusingly similar to the trademark PRADA. There is now a significant body of precedents establishing that adding “www” to a well-known trademark is a form of “typosquatting” and diverts to different Websites those Internet users looking for a famous brand but forgetting to type a point between “www” and <trademark>.com (see for example WIPO cases involving <wwwgeocities.com> and <wwwmyyahoo.com> [Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587], <wwwreuters.com> [Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441], <wwwpfizer.com> [Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199], <wwwmicrosoft.com> [Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274], <wwwsummitracing.com> [Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty. Ltd., WIPO Case No. D2004-0459], and many others). If somebody types on his or her browser <wwwprada.com> rather than <www.prada.com> (a very common mistake), he or she will be “captured” by the Respondent’s Website.

(2) There is no way that the Respondent, a company located in the U.S., where Prada has one of the most significant markets for fashion products, may not have been aware of the famous trademark PRADA, and registration may only have occurred in bad faith; when it may be presumed that “the Respondent (…) knew of the renown of the Complainant’s trademarks”, a finding of “opportunistic bad faith” is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157: here, the Panel found that Respondent, as “an Italian citizen” could not have ignored that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve Cliquot Ponsardin v. The Poligenix Group Ltd., WIPO Case No. D2000-0163, the Panel noted that <veuvecliquot.org> is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith” in Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, it was also suggested that “the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith, [quoting Veuve Cliquot ]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark.” Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLIQUOT or CHRISTIAN DIOR, it was decided that “the Respondent knew of or should have known of the Complainant’s trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainant’s EXPEDIA website” (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137.) Furthermore, it is stress that Prada succeeded in a past UDRP case against the owner of <pradaboutique.com> and that in that case the Panel stated that PRADA is such a famous trademark that it may be presumed that Respondent was aware of it (Prada S.A. v. Mark O’Flynn, WIPO Case No. D2001-0368).

(3) The Respondent has no rights or legitimate interests in respect of the Domain Name. In particular (i) there is no evidence of the Respondent’s 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. “www.wwwprada.com” was originally used to redirect Internet users to a site selling pharmaceutical products (Annex 9). Now it resolves in a page redirecting Internet users to sites selling not only original Prada, but also “replica handbags” (including replica Prada, i.e. counterfeit products) and products from Prada’s direct competitors (Annex 10); (ii) the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name PRADA; (iii) there is no evidence of a non-commercial fair use of the domain name by the Respondent. In fact, most sites to which the Respondent links are commercial and sell several different products.

(4) The Domain Name is used in bad faith. The Respondent capitalizes on the worldwide fame of PRADA to attract users which are then redirected to a number of commercial Websites, most of them not associated with Prada, and some of them competing with Prada or even selling counterfeit Prada products.

B. Respondent

The Respondent failed to file a Response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements is present:

(i) The domain name registered by the Respondent 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 domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Panel notes that the Respondent has failed to respond to the Complaint within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds that:

(1) Identical or Confusing Similar

The dominant part of the Domain Name <wwwprada.com>, being “prada”, is identical or confusingly similar to the Complainant’s famous trademark PRADA registered and used by the Complainant throughout the world as evidenced by the list of registered PRADA trademarks attached to the Complaint (see, Annex 1) The Complainant specifically points out, in paragraph 9(a) of the Complaint, that a domain name consisting of a combination of “www” and “<trademark>.com” without a dot between them, such as the Domain Name in issue, may cause confusion over the Internet. The Complainant convincingly argues that if the Respondent is permitted to use the Domain Name <wwwprada.com>, a person who types on his browser “wwwprada.com” rather than “www.prada.com”, may be captured by the Respondent’s Website. A number of WIPO domain name cases cited by the Complainant clearly show such possibility of confusion.

(2) Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name, because there is no evidence to show that the Respondent has been or is commonly known by the Domain Name, or that the Respondent has acquired any trademark rights in the Domain Name, and the Complainant has never authorized or permitted the Respondent to use “PRADA” in its Domain Name.

As paragraph 9(b) of the Complaint states, the Respondent, being in the United States where the Complainant has one of its most significant markets for fashion products, should have been aware of the Complainant’s famous trademark PRADA which is not a commonly used descriptive word in English, and, hence, it is reasonable to find that the Respondent has no rights or legitimate interests in adopting the word “prada” for the Domain Name.

(3) Registered and Used in Bad Faith

The Complainant’s trademark PRADA is famous throughout the world as indicating the source of the Complainant’s fashion products and the Complainant owns exclusive rights to use PRADA by securing trademark registrations in various countries of the world. Such facts support the finding that the Domain Name consisting of the word “prada” is registered and used in bad faith on the part of the Respondent. In paragraph 9(d) of the Complaint, the Complainant contends, as the ground for asserting the Respondent’s bad faith in the use of the Domain Name, that the Respondent capitalizes on the worldwide fame of PRADA to attract users which are then redirected to a number of commercial Websites, most of them not associated with Prada, and some of them competing with Prada or even selling counterfeit Prada products”. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, the Panel hereby orders, in accordance with Paragraph 4 (i) of the Policy and Paragraph 15 of the Rules, that the Domain Name <wwwprada.com> be transferred to the Complainant.

Teruo Doi
Sole Panelist

Dated: January 27, 2005