WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Ernesto Lucchese

Case No. D2021-0681

1. The Parties

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

The Respondent is Ernesto Lucchese, Italy.

2. The Domain Name and Registrar

The disputed domain name <prada-outlet-online.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2021. On March 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 10, 2021.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on March 22, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was April 11, 2021. The Respondent did not submit any response. Accordingly, the Center sent notification of the Respondent’s default on April 16, 2021.

The Center appointed Petra Pecar as the sole panelist in this matter on May 4, 2021. 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. The Complainant operates in 70 countries with approximately 14.000 employees.

The Complainant is the owner of trademarks for PRADA including the following registrations:

1) Italian Trademark Registration No. 362017000069322 for PRADA filed on July 27, 1977, registered on July 8, 1978 and duly renewed thereafter, in Classes 14,16, 18 and 25;

2) European Union Trademark Registration No. 012443362, for filed on December 18, 2013 and registered on May 13, 2014, in Classes 18, 25 and 35;

3) International Trademark Registration No. 650695 for registered on December 15, 1995, in Classes 3, 5, 9, 14, 18, 24, and 25 designating also Italy and United States of America; and

4) United States Trademark Registration No. 2162795 for registered on June 2, 1998, in International Classes 18 and 25.

The Complainant also has a portfolio of over 260 domain names which incorporate its PRADA trademarks under several TLDs including <prada.it>, registered on June 12, 1997. The Complainant’s goods are available for purchase from online shops on the Complainant’s websites.

The disputed domain name was registered by the Respondent on July 22, 2017. When the Complainant became aware of the disputed domain name, it was redirecting to “http://prada.outletmall.us/”, a website displaying the PRADA trademarks and official advertising images and clearly promoting and offering for sale PRADA products that seem to be counterfeit. At the time of the decision, the disputed domain name resolves to a website displaying the same content that was previously published on “http://prada.outletmall.us/”, i.e., the PRADA trademarks and official advertising images and clearly promoting and offering for sale PRADA products that seem to be counterfeit, generating the impression that the website is operated by the Complainant.

The Complainant sent a Cease-and-Desist Letter addressed to the Respondent on January 9, 2020 via the online form available on the public WhoIs records of the disputed domain name and to the email address indicated on the corresponding website, but the Respondent did not respond to the communication. In the absence of any response, reminders were sent on January 23, 2020, February 11, 2020 and March 10, 2020. The last reminder was sent also to an additional email address, indicated in the public WhoIs record of the domain name <outletmall.us>, comprising the third level domain name <prada.outletmall.us> to which the disputed domain name was redirected. The Respondent did not provide any response to the communications to request further clarifications or confirm its willingness to comply with the Complainant’s demands. On January 17, 2020, the Complainant sent a Cease-and-Desist Letter also to the hosting provider of the website published at the disputed domain name, requesting the deactivation of the website, but this letter also remained unanswered. Therefore, on January 23, 2020 and February 11, 2020 the Complainant sent reminders to the hosting provider, but no reply was received to such additional communications either.

5. Parties’ Contentions

A. Complainant

The Complainant is an international fashion company that offers a wide range of luxury good and owns a number of trademark registrations containing the name PRADA throughout the world. The Complainant owns a number of registered domain names containing the trademark PRADA. The Complainant’s trademark rights have been recognized within numerous previous UDRP decisions, which are referenced within the Complaint. Some of those decisions have also found that the Complainant's PRADA trademark is well-known.

The Complainant contends that the disputed domain name is confusingly similar to its PRADA trademark. Further, the Complainant states that the disputed domain name incorporates entirely the Complainant’s PRADA trademark and additionally consists of the non-distinctive terms “outlet” and “online,” hyphens and the applicable generic Top-Level Domain (“gTLD”) suffix “.com” which does not prevent a finding of confusing similarity with PRADA trademark. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark PRADA.

As a supporting argument on the confusing similarity in cases involving combinations of complainants’ trademarks with non-distinctive elements of the disputed domain name, the Complainant refers to the following UDRP decisions: L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066; Bottega Veneta International S.A.R.L. v. peng fen, WIPO Case No. D2012-0429; Bottega Veneta International S.A.R.L. v. PrivacyProtect.org and henli, luo xiaojie, WIPO Case No. D2012-0715; The Manufacturers Life Insurance Company v. Bui Duc Anh, WIPO Case No. D2020-3463; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Perfect Privacy, LLC / Raymond Chijioke, WIPO Case No. D2020-2817; Puma SE v. Internet Domain Services BS Corp / Joan Gonzalez, WIPO Case No. D2020-2747; Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

Further, the Complainant alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name in an unlawful manner, by way of selling counterfeit goods which are advertised and offered for sale at significantly lower prices without any disclaimer provided as to the lack of affiliation between the Respondent’s website and the Complainant. On the contrary, at the moment when the Complainant became aware of the disputed domain name, it was redirecting to the webpage: “http://prada.outletmall.us/”, a website displaying the PRADA trademark and official advertising images and promoting and offering for sale counterfeit PRADA goods. At a later stage, the disputed domain name started resolving to a web page displaying the same content that was previously published on the mentioned webpage, which was in the same manner offering for sale prima facie counterfeit PRADA products. This webpage, as in the case of the previous, lacks information about the entity operating the Respondent’s websites. Instead, the statement “PRADA - official website” is present on this webpage. The Respondent’s use of the disputed domain name is, therefore, certainly an attempt to confuse and mislead Internet users into believing that the website is operated by the Complainant or by an affiliated entity with the Complainant’s consent.

The Complainant refers to many other UDRP decisions supporting its claims on the lack of a legitimate interest, such as: Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134; National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387;Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750); WIPO Case No. D2004-0750, Cartier International, N.V. Guccio Gucci S.p.A. v. Domain Administrato – Domain Administrator; WIPO Case No. D2010-1589, Cartier International, B.V. v. David Lee; WIPO Case No. D2009-1758, Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi ZhouO, Fujian Anfu, etc.

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

The Complainant indicates that the very use of the well-known trademark in the disputed domain name indicates opportunistic bad faith. According to the Complaint, the well-known status of the PRADA trademark has been recognized in several prior UDRP decisions issued in favor of the Complainant, including the following: Prada S.A. v. Chen Mingjie, WIPO Case No. D2015-1466 (“The Panel agrees that PRADA is a well-known luxury trademark”); PRADA S.A. v. Carlo Tafuri, IDT Spa, WIPO Case No. D2015-1421 (“The Panel agrees with those UDRP panels that have previously found that the PRADA mark is well-known with a strong and distinctive reputation”); Prada S.A. v. lin, WIPO Case No. D2012-1554 (“The Panel is satisfied that the Respondent was aware of the Complainant’s famous trademark when it registered the Domain Name”); Prada S.A. v. Whois as N/A, WIPO Case No. D2008-0135 (“the Complainant’s trademark is famous around the world”); and Prada S.A. v. the peace company, WIPO Case No. D2006-1404 (“This Panel admits the uncontested affirmations made by the Complainant, regarding the widespread publicity and recognition of the trademark PRADA. Moreover, this Panel agrees with Prada S.A. v. Michael Faronston, WIPO Case No. D2006-0585, Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019, Prada S.A. (formerly Prefel S.A.) v. Mark O’Flynn, WIPO Case No. D2001-0368 and a considerable number of “PRADA” cases brought under the Policy, in which the respective Panels have found that the trademark PRADA is famous”).

With respect to the argument of use of the disputed domain name in bad faith, the Complainant refers to the following decisions: Guccio Gucci S.p.A. v. Domain Administrato – Domain Administrator, WIPO Case No. D2010-1589; “Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019; Guccio Gucci S.p.A. v. Zhou Guodong, WIPO Case No. D2010-1695; Balenciaga v. liu zhixian, WIPO Case No. D2010-1831; Bayerische Motoren Werke AG v. This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

B. Respondent

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

6. Discussion and Findings

6.1 Substance of the Complaint and Applicable Standards

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 prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).

In the case at hand, the Complainant has provided evidence of its PRADA rights on the basis of its multiple trademark registrations in the European Union, the U.S, Italy and Internationally. All of these PRADA trademarks were duly registered long before the Respondent registered the disputed domain name on July 22, 2017.

The disputed domain name consists of the Complainant’s trademark PRADA, together with the dictionary terms “outlet” and “online,” a hyphen and the applicable generic Top-Level Domain (“gTLD”) suffix “.com”. Because the Complainant’s PRADA trademark is recognizable within the disputed domain name, the inclusion of the additional elements does not prevent a finding of confusing similarity.

It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a registered trademark. Numerous UDRP panels have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. Such findings were confirmed, for example, within the Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. Therefore, the Panel holds that the additional terms “outlet” and “online” do not prevent a finding of confusing similarity.

For the purpose of determining whether the disputed domain name is confusingly similar to the Complainant’s trademark, the generic Top Level Domain (“gTLD”) “.com” is disregarded since it does not generally preclude a finding of confusing similarity between the disputed domain name and the complainant’s trademarks in accordance with the well-established practice of previous UDRP panels. Therefore, the Panel holds that the combination of the Complainant’s trademark PRADA and terms “outlet” and “online” together with a hyphen in between, and the applicable gTLD suffix “.com” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s PRADA mark, which remains clearly recognizable in the disputed domain name (see also sections 1.8 and 1.11 of WIPO Overview 3.0).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4 (a) (ii) of the Policy, the Complainant must be able to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

From the evidence provided by the Complainant this Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. The website to which the disputed domain name resolves to a website offering for sale various PRADA products that seems to be counterfeit (especially having in mind the significant discrepancy in prices between the genuine goods and goods offered on the website at the disputed domain name). Therefore, it seems that the Respondent has used the disputed domain name in order to mislead Internet users into believing that the goods and services offered on the website are the Complainant’s outlet goods with lower prices. Section 2.13 of WIPO Overview 3.0 stipulates that the use of a domain name for illegal activity (including the sale of counterfeit goods) can never confer rights or legitimate interests on a respondent.

Furthermore, the Respondent does not seem to be a reseller or distributor of the Complainant’s products, and the Complainant denies the existence of any business connection between them. Even in a scenario where the Respondent would be the Complainant’s reseller or distributor, the Respondent would need to comply with the criteria established in the Oki Data test (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Based on the Oki Data test criteria, in order for legitimate use to be established, the following conditions must be fulfilled:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

In the present case, the Respondent has failed to provide any information about its relationship with the Complainant. As a matter of fact, the Respondent has also failed to disclose any information about himself on the website to which the disputed domain name resolves. Instead, the Respondent has stated on the website that the online store is “PRADA - official website” creating a false affiliation with the Complainant.

Finally, the Panel also finds that there is no evidence that the Respondent is commonly known by the disputed domain name. Since the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the burden of production has shifted to the Respondent to come forward with relevant evidence demonstrating the existence of such rights or legitimate interest. Given the absence of a response to the Complaint, the Respondent has plainly failed to satisfy its burden.

Therefore, the Panel accordingly finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The disputed domain name contains the Complainant’s PRADA trademark and additional words which describe the manner of the sale (“outlet” and “online”) and as such, are closely linked to the Complainant’s products. The use of these terms that closely correspond to the Complainant’s field of activity can increase the confusion between the disputed domain name and the Complainant’s trademark.

Having in mind the global reputation of the Complainant’s PRADA trademark and the chosen combination of words within the disputed domain name, it seems rather unlikely that the Respondent was not aware of the Complainant’s trademark rights at the time of registration of the disputed domain name. Having in mind all the above, the Panel holds that the disputed domain name has been registered in bad faith.

The Respondent’s awareness of the Complainant and its PRADA trademark is confirmed by the use of the disputed domain name which resolves to a website displaying the PRADA trademarks and official advertising images and clearly promoting and offering for sale PRADA products which are under serious suspicion of being counterfeit products. In accordance with section 3.1.4 of WIPO Overview 3.0, the use of a domain name for illegal activities such as the sale of counterfeit goods is manifestly considered as evidence of bad faith.

As the disputed domain name is confusingly similar to the Complainant’s PRADA trademarks and points to a website which makes unauthorized use of the Complainant’s PRADA trademarks and images from the Complainant’s websites and purports to sell products which are branded with the Complainant’s PRADA trademarks, it is inevitable that confusion will be caused to Internet users. It is also clear that the Respondent intends to create that confusion for the purpose of commercial gain. For this reason, the Panel finds that the disputed domain name has been used in bad faith.

The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

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 name <prada-outlet-online.com> be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: May 18, 2021