WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Roderick G. Arnold

Case No. D2002-0928

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

The Respondent is Roderick G. Arnold of London, United Kingdom of Great Britain and Northern Ireland.

The disputed domain name <pradacasa.com> is registered with Easyspace.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2002. On October 8, 2002, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain name at issue. On October 16, 2002, Easyspace 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, and the proceedings commenced on October 17, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2002. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 7, 2002.

The Center appointed Isabelle Leroux as the sole Panelist in this matter on November 13, 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 is Prada S.A., a Luxemburg corporation.

Prada was founded in 1913, as a manufacturer of leather bags and expanded into footwear, women’s wear and men’s wear.

The name and mark Prada are famous internationally and the Complainant’s clothing and accessories are sold internationally under the famous Prada brand.

The Complainant owns trademark and service mark registrations for the mark Prada in some 100 countries in classes 3, 5, 6, 8, 9, 10, 11, 14, 16, 18, 20, 21, 23, 24, 25, 26, 27, 28, 34, 35, 41 and 42.

These registrations include national registrations, for example Great Britain where the Respondent is located, and international registrations, the earliest dated from 1962.

The Complainant has registered more than 30 domain names incorporating the Prada mark, including <prada.com>.

On September 1, 2001, the Respondent registered the domain name <pradacasa.com>.

On April 9, 2002, Prada’s in-house attorney sent the Respondent a cease and desist letter.

On May 3, 2002, the Complainant sent a follow up letter to the Respondent.

On May 20, 2002, the Respondent responded by fax to the Complainant’s letter refusing to assign the subject domain name to the Complainant.

On May 28, 2002, Complainant requested the Respondent to assign the domain name.

On June 12, 2002, the Respondent refused to assign the subject domain name unless Prada made an appropriate offer.

On June 20, 2002, the Complainant sent another letter informing the Respondent that the Complainant does not buy domain names and requesting the Respondent to assign the subject domain.

On July 1, 2002, the Respondent sent the Complainant a letter stating that if the Complainant does not wish to purchase the name, then he will not assign it.

The Complainant contends that:

The domain name <pradacasa.com> is virtually identical and is confusingly similar to the Complainant’s Prada trademark and trade name. The addition of the word "casa" as a suffix to the Complainant’s marks makes the disputed domain name confusingly similar to the Complainant’s marks.

The Respondent is not commonly known by or acquired any trademark or service marks in the <pradacasa.com> domain name. It is inconceivable that the Respondent did not have any knowledge of Complainant’s famous Prada mark when registering the domain name <pradacasa.com>. The Respondent has no authorization from the Complainant to register the domain name <pradacasa.com>.

The Respondent has not used the <pradacasa.com> domain name in connection with a bona fide offering of goods and services. Since the registration of the domain name on September 1, 2001, and as of the filing date of the Complaint, no website has been or is accessible by using the domain name <pradacasa.com>, nor does the Respondent appear to have any other online location with respect to this domain name.

The Respondent is not making a legitimate non-commercial or fair use of the <pradacasa.com> domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent’s offer for Complainant to purchase the domain name clearly shows that the Registrant has registered and is using the <pradacasa.com> domain name for commercial gain.

By engaging in "passive holding" of the <pradacasa.com> domain name, the Respondent has registered and used it in bad faith. There is no evidence that shows that the Respondent has taken any positive action in relation to the <pradacasa.com> domain name, other than offering to sell it to the Complainant. This inaction called "passive holding" of a domain name with or without any commercial gain in combination with not having any legitimate rights or interests in the domain name, has been held to constitute use of the domain name in bad faith.

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

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

"A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable".

Paragraph 4(a) of the Policy states that, for a Complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and,

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and,

(iii) that the domain name is been registered and used in bad faith.

The Complainant’s trademarks Prada are well-known throughout the world.

The disputed domain name <pradacasa.com> is made up of the Complainant’s trademarks with the addition of the word "casa".

The addition of the suffix "casa" does not affect the attractive power of the word Prada and the name "pradacasa" is consequently confusingly similar to the registered trademarks Prada.

The Registrant of the domain name at issue has not filed any Response to the Complaint and then has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.

The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademarks or to apply any domain name incorporating the trademarks. Therefore, prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy.

By not submitting a Response, the Respondent has failed to demonstrate that he has rights or legitimate interests in the domain name.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy to register a domain name consisting of the well known trademark of a third party.

The Policy (paragraph 4(b)), indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith.

The bad faith of the Respondent is established by the following elements:

- The Prada trademarks are well-known thus the Respondent could not ignore the existence of these well-known trademarks at the time of registering the domain name <paradacasa.com> (see Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007).

- The Respondent has never used the domain name concerned. The absence of development of any website using the domain name in dispute or the absence of any other good faith use of the domain name are elements of the bad faith of the Respondent. Indeed, according to previous decision, the notion of "use in bad faith" must not be limited to positive actions and the passive holding in relation to a domain name can constitute also another ground of use of a domain name in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and eBay Inc v. Sunho Hong, WIPO case D2000-1633).

- The Respondent offers to sell its rights to the disputed domain name in return for "an appropriate offer" from the Complainant (see Sony Kabushiki Kaisha aka Sony Corporation et al. v. Salvatore Vetro, WIPO Case No. D2001-0575).

Thus, the Panel concludes that the domain name was registered and is being used in bad faith.

For the above reasons, the Panel decides as follows:

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pradacasa.com> be transferred to the Complainant.