WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Minidisco

Case No: D2002-0923

The Complainant is Prada S.A. of Lugano, Switzerland, represented by Robin Blecker & Daley of United States of America.

The Respondent is Minidisco of Berkeley, California, United States of America.

The disputed domain name <prada.biz> (hereinafter the "Domain Name") is registered with BulkRegister.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2002. On October 7, 2002, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On October 9, 2002, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, both to the registrant address noted in the WHOIS for the Domain Name and to an alternative address provided in the Complaint, and the proceedings commenced on October 11, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2002.

The Center appointed Andrew D S Lothian as the sole Panelist in this matter on November 7, 2002. 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.

The Complainant owns trademark and service mark registrations for the mark PRADA covering various countries worldwide in international classes 3, 5, 6, 8, 9, 10, 11, 14, 16, 18, 20, 21, 23, 24, 25, 26, 27, 28, 34, 35, 41, and 42. In addition to an extensive trademark portfolio in Italy, the Complainant and its predecessors have registered the PRADA mark in the United States of America since 1984, for goods and services in international classes 3, 9, 12, 14, 16, 18, 20, 21, 24, 25, 28, 34, and 42.

The Complainant is the registrant of numerous domain names incorporating the PRADA mark including <prada.com> registered on June 9, 1997.

The Complainant is highly active in the worldwide fashion business and spends large sums, in the millions of dollars annually, on promoting the PRADA mark, including for example sponsorship of the America’s Cup 2000 sailing tournament. The Complainant’s clothing and accessories feature extensively in international fashion and mainstream press coverage.

The Complainant’s PRADA branded products are sold worldwide through the Complainant’s own PRADA boutiques, in-store boutiques of well-known retail outlets and through selective distribution networks. The Complainant has a considerable number of fully-owned shops in various cities internationally, including Milan, London, Paris and New York. In the year 2000, the Complainant’s gross annual income was reported as $1,42 billion.

The Complainant’s PRADA mark is extremely well-known internationally.

The Domain Name was registered on November 19, 2001. There is no active webpage at the URL "http://www.prada.biz" or at "http://prada.biz".

On April 16, 2002, the Complainant sent a cease and desist letter to the Respondent, a copy of which is supplied at Annex 2 to the Complaint. In the letter, the Complainant’s in-house attorney requested the Respondent to immediately assign the Domain Name to the Complainant. The Respondent did not reply to this letter and on July 15, 2002, the Complainant’s attorney sent a reminder letter referring to the terms of the original cease and desist letter [Annex 3].

On or about July 31, 2002, the Complainant received a letter from Paul Budnitz of the "People’s Reactionary Anarchy Development Agency" apparently on behalf of the Respondent [Annex 4]. This letter acknowledged receipt of the Complainant’s letter of July 15, 2002, and claimed that there was no trademark infringement. The letter went on "In fact, I have for many years been working on personal projects under the name People’s Reactionary Anarchy Development Agency. We produce reactionary anarchist comic books and literature, and legally purchased this domain name to promote our literary projects." Mr. Budnitz also stated "In an effort to resolve this dispute, however, we would consider selling you this domain name before we put up our new site if you were to offer us an acceptable price. Otherwise, we will go ahead with our plans to use this site to promote anarchist literature, art, and comic books."

On August 21, 2002, the Complainant sent Mr. Budnitz an email offering to buy the domain name "at the costs you supported to obtain the registration" [Annex 5]. Mr. Budnitz replied by email on the same date offering to sell the Domain Name for $25,000 [Annex 6]. The Respondent added "We have been operating under our current name for many years, and are otherwise planning to use it ourselves in the very near future". No further correspondence took place between the parties.

The Complainant contends that the Domain Name is a total appropriation of Complainant’s famous PRADA mark and is identical to the PRADA mark visually, phonetically and connotatively. The Complainant refers to Prada S.A. v. The NMB Network, WIPO Case No. D2001-1090, where the disputed domain name <prada.org> was found to be identical to the Complainant’s PRADA trademark, in support of this assertion.

The Complainant contends that its use of PRADA precedes the Respondent’s registration of the Domain Name by many years. It submits that it is inconceivable that the Respondent did not have knowledge of the Complainant’s famous PRADA mark when registering the Domain Name, citing Fire-Trol Holdings, L.L.C. v. Fire Foam Products Development, NAF Case No. 0093709, and America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. 0093679, as examples of other cases where this proposition has been accepted by an Administrative Panel.

The Complainant submits that it has not permitted the Respondent in any way to use the PRADA mark or to apply for relative domain names and that there is no evidence that shows the Respondent has been or is commonly known by the Domain Name or has acquired relative trademark or service mark rights in it.

The Complainant states that even if the Respondent could establish rights or legitimate interests in respect of the ‘People’s Reactionary Anarchy Development Agency’ this does not mean the Respondent has such rights or interests in the acronym P.R.A.D.A. The Complainant cites Hewlett-Packard Company v. Cupcake City, NAF Case No. 0093562, and The NASDAQ Stock Market, Inc. v. Steve Grewal, WIPO Case No. DTV2001-0001, as examples of similar propositions.

The Complainant asserts that there is no evidence that the Respondent has made any use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. It submits that since registration of the Domain Name and as of the filing date of the Complaint, no web site had been or was accessible by using the Domain Name. The Complainant states that this is supported by the Respondent’s use in the correspondence of language such as ‘before we put up our new site’, ‘we will go ahead with our plans to use the site’ and ‘planning to use it ourselves in the very near future’. The Complainant cites the case Prada S.A. v. Mark O’Flynn, WIPO Case No. D2001-0368, in which the present Complainant was also the complainant, relating to the domain name <pradaboutique.com>, as supportive of the contention that a use of a web site under construction is not use in connection with a bona fide offering of goods and services.

The Complainant further contends that the Respondent’s statements in its email messages regarding its activities under the ‘People’s Reactionary Anarchy Development Agency’ are baseless and unsupported by evidence. It cites the case World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306, as supportive of its proposition that the Respondent’s failure to present any credible evidence of demonstrable preparations to make a legitimate use is fatal to its claim of a legitimate interest in the domain names.

The Complainant states that there is no evidence showing that the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain misleadingly to divert consumers or to tarnish the marks at issue so as to create an impression of association with the Complainant. The Complainant argues that the Respondent’s offer to sell the Domain Name to the Complainant clearly shows that the Respondent registered and is using the Domain Name for commercial gain.

The Complainant submits that it would be impossible for the Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating the Complainant’s rights or tarnishing the PRADA mark. For this proposition it cites Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.

The Complainant contends that the Respondent registered the Domain Name in bad faith.

With regard to the offer of sale, the Complainant cites Prada S.A. v. Mark O’Flynn, supra, for authority that a willingness by a Respondent to sell a domain name to the Complainant has been held to be in bad faith in a previous case under the Policy. The Complainant asserts that the Respondent’s proposal to sell the Domain Name at $25,000 constitutes an amount far in excess of the registration fees. The Complainant argues that the Respondent must be presumed to have had constructive knowledge of the Complainant’s rights in the PRADA mark, citing The PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains For Sale, Inc., NAF Case No. FA00104101.

The Complainant states that the Respondent is engaging in passive holding of the Domain Name, indicative of a registration and use in bad faith. It contends that there is no evidence that the Respondent has taken any positive action with regard to the Domain Name other than the offer of sale. The Complainant refers to the oft-cited case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 for authority that the passive holding of a domain name incorporating a complainant’s famous trademark can be held to be a bad faith use.

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

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The 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 Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

This Panel has no hesitation in finding that the Domain Name is identical to a trademark in which the Complainant has rights and for this purpose disregards the top level of the Domain Name <.biz> as wholly generic.

Does the Respondent have rights or legitimate interests in the Domain Name?

The Complainant has not permitted the Respondent to use its mark or to register any domain name corresponding to it. There is no evidence that the Respondent has used the name PRADA, the acronym P.R.A.D.A. or the Domain Name as a trademark, and nor is there any evidence, apart from the Respondent’s assertion in the correspondence, that the Respondent has ever been known by that name. There is no indication that the Respondent has made any preparations to use the Domain Name and the Respondent’s assertions of imminent use within the correspondence are not sufficient evidence of actual preparations.

With regard to the specific claims of the Respondent concerning the acronym P.R.A.D.A., it is useful to review the case of The NASDAQ Stock Market, Inc. v. Steve Grewal, WIPO Case No. DTV2001-0001, in which a similar situation presented itself. In that case, the Respondent claimed that he had rights and legitimate interests in the domain name <nasdaq.tv> on the grounds that he ‘had been developing’ an organization known as the North American Sikhs Demanding Answers to Questions or NASDAQ. The Panelist in that case pointed out that even if legitimate interests can be established in the name of an organization this does not mean such interests can be established in any relative acronym - acronyms can be readily changed. Furthermore, the Panelist noted that the acronym selected by the Respondent was not suggestive of the purpose of the organization or of a common word, but simply corresponded directly to the complainant’s famous mark.

In this regard, the present case corresponds factually with the NASDAQ case. There is no evidence before the Panel that the Respondent is able to establish rights or legitimate interests in the claimed name of his organization, far less in the acronym. The acronym neither suggests the purpose of the organization, nor is a common word, but either by coincidence or design corresponds directly to the Complainant’s famous mark. To paraphrase the words of the Panelist in the NASDAQ case, the P.R.A.D.A. acronym is ‘conveniently identical’ to the PRADA mark.

The Panel considers that the Complainant has made out an arguable case that the Respondent’s P.R.A.D.A. acronym is merely a device to clothe the registration of the Domain Name with a veil of legitimacy. Once the Complainant has made out such a case it is for the Respondent to answer that case by reference to paragraph 4(c) of the Policy or by demonstrating some other reason why the Respondent has rights or legitimate interests in respect of the Domain Name. Here no such answer is provided. Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

It is clear from the correspondence between the Complainant and the Respondent that the Complainant did not solicit the Respondent’s offer to sell the Domain Name. On the contrary, this was first proposed by the Respondent and when the Complainant effectively offered to meet the Respondent’s out of pocket costs with regard to the Domain Name the Respondent countered with a price of $25,000. On any view this is significantly in excess of the Respondent’s likely out of pocket costs. The Panel considers that (1) this offer of sale, together with (2) the fact that the Respondent must have known (or had constructive notice) of the Complainant’s famous trademark, and (3) the acronym selection which looks like a device of convenience and is lacking in any credibility, taken together, indicate that the Respondent’s primary purpose in registering the Domain Name was to effect such a sale to the Complainant.

The Domain Name is the subject of ‘passive holding’. The Telstra case cited by the Complainant is often referred to for the five-stage test devised by the Panelist to identify whether the passive holding of the domain name in that case amounted to the Respondent acting in bad faith. The test employed was as follows:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use [locally] and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

In the present case, clearly the Complainant’s trademark has a strong international reputation. Equally, the Respondent’s assertion in the correspondence as to its planned use of the Domain Name is lacking in credibility and the Respondent has not provided any further details or evidence by way of a response in this Administrative Proceeding. While the Respondent has not provided false contact details or taken active steps to conceal its true identity it is certainly not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent (and this includes the forthcoming use alleged by the Respondent in the correspondence) that would not be an infringement of the Complainant’s rights.

The Panel accordingly finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy.

In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Panel directs that the Domain Name <prada.biz> be transferred to the Complainant.