WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRADA S.A. v. Artemis Davis / Mo Zeghloul / Xinqian Rhys / Xiayu Zhi / Gueijuan Xu

Case No. D2017-2069

1. The Parties

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

The Respondents are Artemis Davis of Memphis, Tennessee, United States of America (“United States”) / Mo Zeghloul of Pittsburgh, Pennsylvania, United States / Xinqian Rhys of Beijing, China / Xiayu Zhi of Zhanjiang, Guangdong, China and Gueijuan Xu of Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <miumiubagsonline.com>, <miumiubagsstore.com>, <miumiuhandbagsonlineshop.com>, <miumiuhandbagsoutletcheap.com>, <miumiuhandbagsoutletshop.com>, <miumiuhandbagsshoponline.com>, <miumiuoutletstore.com>, <pradabagonlineshop.com>, <pradahandbagsonline.com>, <pradahandbagsonlineshop.com>, <pradahandbagsoutletonline.com>, <pradahandbagsoutletus.com>, <pradahandbagssaleoutlet.com>, <pradahandbagsshop.com>, <pradaonlinemall.com>, <pradaoutletonlineus.com>, <pradaoutletxyz.com>, <pradatophandles.com> and <pradausoutlet.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2017. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.

The Center verified that 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 Respondents of the Complaint, and the proceedings commenced on November 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 30, 2017.

The Center appointed Antony Gold as the sole panelist in this matter on December 7, 2017. 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 an Italian luxury fashion house. Its PRADA brand was founded in 1913 and its MIU MIU brand was established in 1993. The Complainant trades through a network of directly operated stores in Europe, the Middle East, North America, Japan and Asia Pacific as well as through franchise stores multi-brand stores and department stores.

The Complainant is the owner of an extensive portfolio of trade marks for PRADA and MIU MIU including the following:

1) Italian trade mark no. 1234755 for PRADA (word mark) registered on December 1, 2009, in class 3;

2) European Union trade mark no. 271163 for PRADA (word mark) registered on November 8, 2000, in classes 9, 16 and 21;

3) European Union trade mark no. 5216312 for PRADA (figurative mark) registered on June 22, 2007, in class 9;

4) European Union trade mark no. 4253191 for MIU MIU (word mark) registered on February 16, 2006 in classes 18 and 25;

5) International trade mark registration no. 686143 for MIU MIU (word mark) registered on December 2, 1997, in classes 3, 9, 14, 16, 21, 24 and 26.

The Complainant also has a portfolio of over 300 domain names which incorporate its PRADA or MIU MIU trade marks including <prada.com>, registered on June 9, 1997, and <miumiu.com>, registered on November 9, 1997. Its goods are available for purchase from the websites to which its domain names point.

The Complainant uses its trade marks in connection with the distribution and sale of the various classes of goods for which they are registered. These include shoes, clothing, luggage, fragrances, bags, sunglasses and cosmetics. The Complainant’s PRADA and MIU MIU brands are promoted and advertised worldwide in numerous international publications, including Cosmopolitan, GQ and Vogue.

The disputed domain names were registered by the Respondents between May 31, 2016 and August 4, 2017. As at the date of filing the Complaint, each of the disputed domain names pointed (or has, at various times since the date of registration, pointed), to English language websites, which have displayed the PRADA and MIU MIU marks and offered for sale goods which purport to be PRADA and MIU MIU merchandise, albeit at prices which are substantially below the prices at which the Complainant advertises them for sale. Additionally, the website resolved to by the nineteenth disputed domain name displays, in addition to the Complainant’s PRADA and MIU MIU trade marks, other trade marks belonging to the Complainant’s competitors, such as Versace, Dior and Hermes. The cease-and-desist letters have been sent at various times to the registrants of each of the disputed domain names, save in respect of the fourth, eighteenth and nineteenth disputed domain names, but have not produced a response from any of the Respondents.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain names are confusingly similar to its PRADA and MIU MIU trade marks. The Complainant states that the each of the disputed domain names incorporate entirely the Complainant’s PRADA or MIU MIU trade marks. It says that the addition to its trade marks of descriptive and generic terms such as “shop”, “online” or “handbags” does not lessen the confusing similarity with those marks, because these descriptors would naturally be associated by Internet users with the Complainant and its products.

The Complainant adds that it is a well-established principle that where domain names incorporate the whole trade mark, particularly famous marks, this will be sufficient for a finding of confusing similarity for the purposes of the Policy, notwithstanding the addition of any generic or descriptive element. In this respect, it refers to the decision of the panel in Guccio Gucci S.p.A. v. Zhang Jiawen/Zeng Aiqin/Zhou Honghai/Zhuhonghai/Zhou Hong Hai/ Honghai Zhou/ Liu Min/ Jianghong Wang, WIPO Case No. D2015-2088 in which the panel found that, where a domain name incorporates a complainant’s trade mark in its entirety, the addition of “generic, geographic or descriptive terms and/or numbers” does not diminish the confusingly similarity.

The Complainant says that the incorporation, within the fourteenth, fifteenth and eighteenth disputed domain names, of the geographical indicator “us” (for United States) is insufficient to distinguish these domain names from the Complainant’s PRADA and MIU MIU trade marks. Rather, it is liable to increase confusion amongst Internet users, given the internationally well-known status of the Complainant’s trade marks and the numerous retail outlets situated in the United States which stock its products. The Complainant refers to the decision Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768 which held that, where a respondent registers a domain name incorporating the complainant’s trade mark entirely and adds a geographical suffix, the average Internet user is likely to assume that the suffix describes the geographical source or origin of the complainant’s business, products or services.

The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names. In this respect, it points out that earlier UDRP panel decisions have recognised the inherent difficulties in requiring a complainant to prove a negative and held that if a complainant is able to produce prima facie evidence of a respondent’s lack of rights or legitimate interest, the burden of production of demonstrating to the contrary shifts to the respondent.

The Complainant says that the Respondents are not licensees, nor affiliated with it, nor authorised by it in any way to use its PRADA or MIU MIU trade marks. Moreover, the Respondents are not authorised resellers nor do they have any business connection with the Complainant, nor have they been authorised by the Complainant to register and use the disputed domain names. The Complainant does not believe that any of the Respondents are commonly known by the disputed domain names, nor that their family names correspond to PRADA, MIU MIU or the disputed domain names.

Furthermore, it says, the Respondents have not provided any evidence of use, or demonstrable preparations to use, the disputed domain names for a bona fide offering of goods or services prior to receiving notice of the Complaint. The Complainant says that the Respondents are using the Complainant’s PRADA and MIU MIU trade marks on websites to which the disputed domain names point, without authorisation and for the purpose of offering for sale seemingly counterfeit PRADA and MIU MIU goods. The Complainant says that this is not a bona fide offering of goods by the Respondent. The Complainant draws the Panel’s attention to the decision in Prada S.A. v Chen Mingjie, WIPO Case No. D2015-1466 in which the panel found that “there can be no legitimate interest in the sale of counterfeits”.

Additionally, the Complainant asserts that the Respondents have registered the disputed domain names with the aims of trading on the fame of the Complainant’s PRADA and MIU MIU trade marks for commercial gain, disrupting the Complainant’s business and attracting Internet users and diverting traffic intended for the Complainant to their websites by creating a misleading impression of an association with the Complainant. It says that such activities cannot found a legitimate interest on the part of the Respondents in the disputed domain names.

Lastly, the Complainant asserts that the disputed domain name were registered and are being used in bad faith.

The Complainant asserts that, given the intensive and longstanding use of its PRADA and MIU MIU trade marks worldwide and specifically in the United States and China (these being the countries in which the Respondents appear to be based), it is impossible for the Respondents to have been unaware of the existence of the Complainant and its trade marks when they chose to register the disputed domain names. The Complainant points to previous UDRP panel decisions under the Policy which have acknowledged the fame of its PRADA and MIU MIU trade marks and says that, in these circumstances, registration of the disputed domain names is necessarily in bad faith. See, for example, Prada S.A. v. Liu Wan Qiu / Amandine Clavier, WIPO Case No. D2011-0091: “It is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the Trade Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant”.

Moreover, the Complainant refers to the use of its PRADA and MIU MIU trade marks by the Respondents on the websites to which the disputed domain names resolve and the fact that purported PRADA and MIU MIU products are offered for sale on them. In the light of this, the Complainant contends that it is evident that the Respondents have registered the disputed domain names with full knowledge of the Complainant’s PRADA and MIU MIU trade marks. It says that the Respondents have done so for the purpose of misleading and diverting Internet traffic intended for the Complainant’s websites to the websites to which the disputed domain names resolve. Furthermore, it is evident from the appearance of those websites, including the use of the Complainant’s PRADA and MIU MIU trade marks, images and the trade marks of competitors, that the offering for sale of purported PRADA and MIU MIU branded goods is intended to create confusion amongst Internet users as to the source, sponsorship, affiliation or endorsement of these websites and the goods offered through them.

The Complainant contends that although the fifth and the tenth disputed domain name now resolve to inactive websites, it is well established that passive holding of a domain name can amount to bad faith in certain circumstances. The Complainant asserts that the conduct of the Respondents in registering domain names of confusing similarity to the Complainant’s MIU MIU trade mark and their redirection until at least July 2017, to websites of a commercial nature (similar to those resolved to by the other seventeen disputed domain names), mean that the fifth and tenth disputed domain name were also used in bad faith.

Lastly, the Complainant contends that the Respondents have registered the disputed domain names to prevent the Complainant from reflecting its own PRADA and MIU MIU trade marks in corresponding domain names and that further, this represents a pattern of conduct by the Respondents in the light of the large number of disputed domain names registered.

B. Respondents

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

6. Discussion and Findings

Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondents have no rights or legitimate interests with respect to the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Procedural Issues

Before dealing with the substantive issues, and having regard to the fact that the Complaint names multiple Respondents to these proceedings, it is first necessary to deal with the Complainant’s request for consolidation pursuant to paragraphs 3(c) and 10(e) of the Rules.

The WhoIs records indicate that ownership of the disputed domain names is as follows:

Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. The principles applied by panels considering requests for consolidation are set out at paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which explains that “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

The Complainant refers to previous UDRP panel decisions in which multiple domain names have been considered to be under common control and the factors considered material to this finding, including: (i) where different registrants were alter egos of the same domain name holder; (ii) where the respondents had a common administrative or technical contact; (iii) where a single person or entity appears to have registered multiple domain names using fictitious names; (iv) where there are substantial commonalities in the websites resolved to by the domain names and the use of the same domain name servers; and (v) where each domain name incorporates a complainant’s trade mark in its entirety, together with a descriptive, or geographical term.

The Complainant asserts that the pattern of registration of the disputed domain names by the Respondents points to them being under common control, whether by a single individual or a group of individuals acting in concert. In particular: (i) the disputed domain names incorporate in their entirety the Complainant’s PRADA and MIU MIU trade marks, with each mark being coupled with a descriptive or generic term; (ii) the disputed domain names share the same Registrar; (iii) the disputed domain names all resolve to English language websites, purporting to offer for sale goods featuring the Complainant’s PRADA and MIU MIU trade marks; and (iv) the websites to which the disputed domain names point are very similar in appearance.

Furthermore, the Complainant draws the attention of the Panel to other features of the disputed domain names and the websites to which they point which suggest a close link between the various Respondents. By way of example, the disputed domain names registered by Artemis Davis and Mo Zeghloul resolve to almost identical websites, each of which refers in their copyright notices to a company called “Guru Denim, Inc”, ostensibly located at an address in the United States, as well as providing the same contact email address. Similarly, the sixteenth and seventeenth disputed domain names both resolve to identical websites and display the same contact email address. Moreover, the registrant information for both disputed domain names show addresses in China.

In addition, the Complainant has tracked back through the history of the registrations of each of the disputed domain names and established other features that tie them together. These features include: (i) transfers of disputed domain names from one of the named Respondents to another named Respondent; (ii) use by the Respondents of either the same postal address or email address as contact details; (iii) use of identical layouts by some of the websites to which the disputed domain names point; (iv) earlier common ownership of some of the disputed domain names by a third party registrant prior to transfer of those domain names by that registrant to some of the named Respondents; and (v) links within some of the websites to which the disputed domain names point which take the Internet user to different websites pointed to by other disputed domain names.

In addition, the Complainant asserts that the images of products featured on the websites resolved to by the disputed domain names are taken from the Complainant’s websites at “www.prada.com” and “www.miumiu.com” and the products are advertised for sale at very low prices, suggesting that they are likely to be counterfeit. For all these reasons, the Complainant believes the disputed domains to be registered by a single individual using different aliases, or by a group of individuals acting under a common design.

As explained at paragraph 4.11.2 of the WIPO Overview 3.0, in considering whether consolidation is appropriate “[p]anels have considered a range of factors, typically present in some combination….. such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>)…..”.

In Guccio Gucci S.p.A. v. Zhang Jiawen/Zeng Aiqin/Zhou Honghai/Zhuhonghai/Zhou Hong Hai/ Honghai Zhou/ Liu Min/ Jianghong Wang, WIPO Case No. D2015-2088, factors such as near identical domain names, the same registrar, the same domain name server and identical email addresses were among the factors that satisfied the panel that the domain names in dispute were subject to common control. Similarly, in Stefano Ricci S.p.A. v. Honghai Zhou, Zhou Hong Hai, Li Fanglin, WIPO Case No. D2015-0095, consolidation was held by the panel to be appropriate where there was evidence that the domain names resolved to near identical websites offering the same goods for sale.

Each of the factors referred to in the extract from paragraph 4.11.2 of the WIPO Overview 3.0 cited above is present, in respect of all of the disputed domain names, albeit not every factor is present in each disputed domain name. However, the Panel is satisfied that the overall evidence points strongly to the disputed domain names being under common control and that it is both procedurally efficient, as well as fair and equitable to all parties, for the Complainant’s assertions in respect of all the disputed domain names to be dealt with within a single complaint.

B. Identical or Confusingly Similar

The Complainant has established, through its ownership of its PRADA and MIU MIU trade marks (full details of a number of these marks having been set out above) that it has rights in the trade marks PRADA and MIU MIU.

For the purpose of determining whether the disputed domain names are confusingly similar to the Complainant’s trade mark, the generic Top Level Domain (“gTLD”) “.com” is disregarded. Each of the disputed domain names has added to it a generic word or words. By way of example, the first four disputed domain names comprise MIU MIU followed by “handbags shop online”, “bags online”, “bags store” and “handbags online shop” (the Domain Name System does not permit the use of spaces within domain names but the separate words are readily discernible). In respect of each disputed domain name, the additional descriptive words chosen will be readily associated by Internet users with the Complainant. Accordingly, the addition of purely descriptive words such as “shop”, “handbags” and “bags store” do not serve to distinguish the disputed domain names from the Complainant’s trade marks nor render them dissimilar to them. Rather, as the Complainant says, the inclusion of those words within the disputed domain names accentuate the impression of a connection with the Complainant’s PRADA and MIU MIU trade marks and therefore serve to increase the likelihood of confusion.

The Panel accordingly finds that the disputed domain names are confusingly similar to trade marks in which the Complainant has rights.

C. Rights or Legitimate Interests

The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name.

How these provisions are usually applied in practice is explained in the WIPO Overview 3.0, section 2.1. This explains that the consensus view of panellists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised very briefly:

(i) if the respondent has been using the domain name in connection with a genuine offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate non-commercial or fair use of the domain name.

It is clear from the evidence before the Panel that the Respondents have not been using the disputed domain names in connection with a genuine offering of goods and services. The websites to which the disputed domain names resolve offer for sale apparently counterfeit PRADA and MIU MIU products using images taken from the Complainant’s websites. The available evidence suggests that the Respondent’s use of the disputed domain names are not genuine in that the disputed domain names are being used in order to mislead Internet users into believing that the goods and services offered on the websites resolved to, are connected in some way to the Complainant. See Cartier International, N.V., Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758 in which the panel found that where a respondent registers and uses a domain name in bad faith (see the discussion below) that party cannot be found to have made a genuine offering of goods and services. Previous UDRP panels have accepted that use of a domain name for illegal activity, such as the sale of counterfeit goods, can never confer rights or legitimate interests on a respondent. The Complainant has adduced no direct evidence to support its assertions of counterfeiting but the Panel takes note of the fact that this serious allegation has not been challenged by any of the Respondents. Having regard also to the low prices at which goods are evidently being offered for sale by the Respondents, the Panel concludes, on a balance of probabilities that the Respondents’ offer of goods is unlikely, in some respect at least, to be genuine.

The Panel finds also that there is no evidence to suggest that the Respondents have been commonly known by the disputed domain names and that the Respondents have been making a legitimate noncommercial or fair use of the disputed domain names. The Complainant having made out a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain named, the burden has shifted to the Respondents to come forward with relevant evidence demonstrating that they have such rights or legitimate interest. By not responding to the Complaint, the Respondents have plainly failed to satisfy it.

The Panel accordingly finds that the Respondents have no rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

The disputed domain names contain the Complainant’s PRADA and MIU MIU trade marks in full and primarily add words which describe the products sold by the Complainant and/or sources from which those products can be purchased (“online shop”, “outlet store” and so on). This points clearly to an awareness by the Respondents of the Complainant and its PRADA and MIU MIU business as at the date of registration of the disputed domain names. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.

The Respondents’ awareness of the Complainant as at the date of registration of the disputed domain names is confirmed by the use to which the disputed domain names have been put following registration.

Paragraph 4(b)(iv) of the Policy provides, in summary, that it will be evidence of bad faith registration and use by a respondent, if, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website to which the domain name resolves by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

The Respondent’s conduct falls squarely within these provisions. The disputed domain names are confusingly similar to the Complainant’s PRADA and MIU MIU trade marks and point to websites which make liberal use of the Complainant’s PRADA and MIU MIU trade marks, use unauthorised images from the Complainant’s websites and purport to sell products which are branded with the Complainant’s PRADA and MIU MIU trade marks. It is inevitable that confusion will be caused to Internet users. It is also clear that the Respondents intend to create that confusion for the purpose of commercial gain. For this reason, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

Accordingly, it is not necessary to consider the additional submissions made by the Complainant in respect of bad faith registration and use.

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 names <miumiubagsonline.com>, <miumiubagsstore.com>, <miumiuhandbagsonlineshop.com>, <miumiuhandbagsoutletcheap.com>, <miumiuhandbagsoutletshop.com>, <miumiuhandbagsshoponline.com>, <miumiuoutletstore.com>, <pradabagonlineshop.com>, <pradahandbagsonline.com>, <pradahandbagsonlineshop.com>, <pradahandbagsoutletonline.com>, <pradahandbagsoutletus.com>, <pradahandbagssaleoutlet.com>, <pradahandbagsshop.com>, <pradaonlinemall.com>, <pradaoutletonlineus.com>, <pradaoutletxyz.com>, <pradatophandles.com> and <pradausoutlet.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: December 20, 2017