WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prada S.A. v. Mark O'Flynn
Case No. D2001-0368
1. The Parties
The Complainant is Prada S.A. [formerly, Prefel S.A.] of Via Cattori 11, 6902 Paradiso, Lugano, Switzerland.
The Respondent is Mark O'Flynn of Via di Villa Grazioli 47, 00046 Grottaferrata, Rome, Italy.
2. The Domain Name and Registrar
The domain name at issue is: and the Registrar is: Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on March 14, 2001 [electronic version] and on March 19, 2001 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is March 26, 2001.
On March 21, 2001 the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case and on March 22, 2001, Network Solutions, Inc. transmitted by email to the Center Network Solutions' verification response confirming that the registrant and the contact for administrative purposes is Mark O'Flynn and that the contact for billing purposes is Luciano Carbonetti of Rome, Italy.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 26, 2001 to
postmaster@;
fn204319@MICROELETTRA.it;
giagenovese@PCG.it;
and to
l.carbonetti@PCGITALY.com
this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 14, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
Mark O'Flynn
Via di Villa Grazioli 47
Grottaferrata
Rome
Italy
Giampiero Genovese
PCG srl
Via Nettunense Km 6, 500
Aricca 00040
Rome;
and to
Luciano Carbonetti
PCG srl
Via Nettunense Km 6, 500
Aricca 00040
Rome
No Response was received from the Respondents by the due date of April 14, 2001. On April 20, 2001 Notice of Respondent Default was sent to the Complainant and to the Respondents using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondents to the Notification of the Respondents' Default was received.
Having received Declarations of Impartiality and Independence and Statements of Acceptance from Mr. David Perkins, Ms. Anna Carabelli and Mr. Scott Donahey, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins, Ms. Anna Carabelli and Mr. Scott Donahey were formally appointed as Panelists. The Projected Decision Date was May 25, 2001. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.
4. Factual background
4.1 The Complainant
The Complainant is Prada S.A., formerly Prefel S.A., of Lugano, Switzerland ["Prada"]. The Complainant is very well known internationally in the fashion field.
4.2 The Complainant's Trademarks
The Complainant has exhibited schedules of its trademarks and service mark registrations for the word mark PRADA in some 100 countries worldwide variously 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 Italy, the country with which the Complainant is most closely related and where the Respondent is domiciled, and international registrations, the earliest dating from 1978 for the word mark PRADA for goods and services in Classes 3: 5: 9: 14: 16: 18: 25: 34 and 42 covering 10 countries. The PRADA word mark has also been registered in the United States of America since 1996 for goods and services in Classes 2: 21: 23: 26: 27: 28: 36: 38 and 50. The earliest national registration, which is in Italy, dates back to the 1970's. By any standards the PRADA mark is and has been comprehensively registered worldwide for a wide variety of goods and services for many years.
4.3 Further, the Complainant has registered more than 30 domain names including the PRADA mark in a number of countries.
4.4 On any footing, the name and mark PRADA is very well-known internationally.
4.5 The Complainant's Business
The Complainant's clothing and accessories [e.g. handbags, luggage, shoes, scarves and leather goods] are sold internationally under the PRADA brand. This is evidenced by a selection of international press coverage exhibited to the Complaint, which includes ELLE: MARIE CLAIRE: HARPER'S: TATLER: VOGUE and GQ magazines. They also include clippings from Le Figaro, The Guardian and other newspapers. PRADA branded products are sold through the Complainant's own PRADA boutiques, in-store boutiques of well-known retail outlets such as Bergdorf Goodman in Manhattan and through selective distribution networks. One newspaper clipping dated 1986 refers to the Complainant company being founded nearly 100 years ago.
4.6 The Respondent
Having filed no Response, nothing is known of the Respondent, save that he is based in Rome and is the registrant of a number of domain names incorporating the mark and name of a number of very well known fashion houses, including GUCCI: ETRO: ARMANI; and FENDI, as to which see paragraphs 5 and 6 below.
4.7 Domain Name in Issue
The domain name in issue was registered by the Respondent on September 9, 1999. The name does not resolve to an active website. The website is stated to be Sito in Allestimento / Site under construction.
5. The Parties' Contentions
5.1 The Complainant
The Complainant contends that the Respondent has registered a domain name which is confusingly similar to its PRADA trademark and to the trading identity of its PRADA Boutique outlets, that the Respondent has no rights to or legitimate interests in respect of that domain name and that the Respondent has registered and is using that name in bad faith.
5.2 Identical or Confusingly Similar
The Complainant relies upon the PRADA mark and identity of its PRADA Boutique retail outlets.
5.3 Rights or Legitimate Interests
The Complainant relies upon the fact that, to the best of its information and belief, the Respondent is not known by nor does he trade under the name Prada Boutique. Further, since the website to which the domain name resolves remains under construction [see paragraph 4.7 above] it is to be inferred in the absence of a Response that before notice of this dispute the Respondent did not make demonstrable preparations to use the name in connection with a bona fide offering of goods or services. Finally, the Complainant has not licensed or otherwise authorised the Respondent to use its PRADA name and mark. In other words, the Complainant's case is that the Respondent cannot bring himself within any of the circumstances of paragraph 4c of the Policy which demonstrate a Respondent's rights or legitimate interest to the domain name in issue.
5.4 Registered in Bad Faith
Here the Complainant's case is that, by reason of the very well known status of the PRADA name and mark, the Respondent must have been aware of it when registering the domain name in issue. This is more so, having regard to the fact that the Respondent is domiciled in Italy, which is the home of the Complainant's world famous business. It is further evidenced by the Respondent's conduct in registering domain names incorporating the marks of other famous Italian clothing companies in combination with the suffix boutique. These are ARMANI: ETRO: FENDI; and GUCCI [see paragraph 4.4 above].
5.5 In support of these contentions the Complainant relies upon the following Decisions under the Policy.
5.5.1 WIPO Case No. D2000-1157 Banca Sella SpA v. Paolo Parente
There the domain name in issue was . The Complainant was a well-known Italian Bank which had been trading since the 19th Century under the BANCA SELLA name. The Panel held that the Respondent, an Italian citizen, must have known of the renown of the Complainant's BANCA SELLA name when he registered the domain name in issue. Therefore, the domain name was registered in opportunistic bad faith. The Respondent, having failed to file a Response, had demonstrated no rights or legitimate interests, a factor to be taken into account when considering registration in bad faith. Finally, by reason of his registration in bad faith and lack of rights or legitimate interests, any use of the domain name by the Respondent would be contrary to fair competition and trademark law principles.
5.5.2 WIPO Case No. D2000-0163 Veuve Cliquot Ponsardin v. The Polygenix Group
There the domain name in issue was . The Panel found that the Respondent had registered and used the domain name in bad faith for the following reasons:
- The VEUVE CLIQUOT mark was so famous that the registration and any attempt to use could only suggest opportunistic bad faith.
- The domain name resolved to a website which directed those with an interest in the domain name to the Respondent's website, which carried the message
"Hi, we sell a whole bunch of Great Domain Names that you might be VERY interested in"
The Respondent had registered over 100 domain names, many of which incorporated third party trademarks. The 2 factors were powerful evidence of bad faith.
- The Respondent had no rights or legitimate interests in the domain name, which might otherwise have legitimised registration and use in good faith.
5.5.3 WIPO Case No. D2000-0226 Parfums Christian Dior v. Javier Garcia Quintas
There the domain names in issue were and . As to bad faith, the Panel cited and applied the Veuve Cliquot Decision [paragraph 5.5.2 above]. The Panel's reasons included:
- Evidence of the Respondent being the registrant - albeit using steps to hide his true identity - of over 100 other domain names, with the intent of acquiring those names and selling them for profit (i.e. trafficking);
- The CHRISTIAN DIOR name and made was so well-known that its very use by an unauthorised third party suggests opportunistic bad faith. It was just not credible that, having regard to the notoriety of the CHRISTIAN DIOR name and mark, the Respondent did not know of it when registering the domain name in issue.
5.5.4 WIPO Case No. D2000-0137 Expedia Inc v. European Travel Network
There, the domain name in issue was . The Complainant had operated an on-line travel agency service using the domain name since 1996. It became during the busy holding shopping season in 1999 one of the top 10 visited e-commerce sites worldwide. Finding registration and use in bad faith, the Panel held that the Respondent, who also operated a competing on-line travel service website, could only have registered the domain name in issue
"� with the primary purpose of diverting potential customers of Complainant to the Respondent's website and thus disrupting the business of a competitor, the Complainant."
The Panel found that the Respondent knew or should have known of the Complainant's trademark at the time it registered the domain name given the widespread use of the Complainant's EXPEDIA website.
5.5.5 That Decision is quoted with approval by the Panel in the CHRISTIAN DIOR case (supra) on the issue of registration and use in bad faith, even though the Complainant's mark was somewhat less famous than the CHRISTIAN DIOR and VEUVE CLIQUOT marks.
5.5.6 WIPO Case No. D2000-1226 Fendi Adele Srl v. Mark O'Flynn
There the domain name in use was and the Respondent the same individual as the Respondent in this administrative proceeding. The domain name resolved to a website stated to be under construction. Also, as in this case, no Response was filed. The Panel found registration and use in bad faith on the following grounds:
- When registering the domain name in issue the Respondent was perfectly aware of the famous FENDI trademark and the sale of FENDI branded products in speciality boutiques.
- This was the more so, given the Respondent's residence in Italy where the FENDI mark is especially famous.
- The Respondent had registered other well-known third party marks as domain names, namely ; ; and others.
- Finally, the Respondent offered to sell the domain names in issue to the Complainant for approximately US$5,800.00 a sum well in excess of his costs directly related to the domain name.
5.6 Used in Bad Faith
Whilst as will be apparent from the synopses of the cases in paragraphs 5.5.1 to 5.5.6 above, they also deal with use as well as registration in bad faith, the Complainant also cites in support of its case on use in bad faith the following additional Decisions under the Policy.
5.6.1 WIPO Case No. D2000-0003 Telstra Corporation v. Nuclear Marshmallows
This case is now so well known that its background needs no repetition here. The Complainant relies on the Decision for the now accepted proposition, with which this Panel agrees, that inaction can in appropriate circumstances constitute use in bad faith. Thus, the passive holding of a domain name - as is apparent from paragraphs 4b(i) - (iii) inclusive - can amount to bad faith use. Relevant circumstances include;
- where the Complainant's trademark has a strong reputation and is widely known; and
- where it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent which 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.
5.6.2 Decisions under the Policy applying the Telstra criteria for assessing use in bad faith
The Complaint cites the following decisions in this respect:
WIPO Case No. D2000-0021 Ingersoll-Rand v. Frank Gully
There the domain names in issue were and and . There the Panel found the Respondent had no rights or legitimate interests in the domain names and that, although no actual use was being made of them, any use would necessarily be contrary to the Complainant's trademark rights and/or amount to unfair competition.
WIPO Case No. D2000-0042 Compaq Computer v. Boris Beric
There, the domain names in issue were and , the Complainant being the owner of the COMPAQ mark, many registrations having the PAQ suffix, including INFOPAQ, and a number of registrations using the SMART prefix. The Respondent made no use of the domain names in issue and the Panel found he had no rights or legitimate interests in them. Citing the Telstra Decision the Panel [the Presiding Panellist in this administrative proceeding] found use in bad faith by reason of:
- he strong reputation of Compaq's trademark and its use internationally; and
- the Respondent's failure to provide evidence of any actual or contemplated good faith use of the domain names.
WIPO Case No. D2000-0075 InfoS, Inc v. Tenenbaum Ofer
There the domain name in issue was and the Complainant was the owner of the INFOSPACE trademark. The Panel found bad faith use by reason of:
- INFOSPACE being a well-known mark and website in the Internet community; and
- anyone using a search engine to find INFOSPACE would be likely to be given a link to the Respondent's site with the result that the Respondent might profit by deliberately creating a likelihood of confusion with the Complainant's mark.
WIPO Case No. D2000-0086 Association of British Travel Agents v. Sterling Hotel Group
There the domain name in issue was and the Complainant was the owner of the well-known ABTA trademark. The domain name did not resolve to an active website but the Panel [the Presiding Panellist in this administrative proceeding] applying the Telstra principles notwithstanding found passive use. The Panel cited the English Court of Appeal decision in the One in a Million case [1999 FSR 1] wherein it was held that a threat to infringe the Plaintiff's well-known trademarks by the Defendant registering them as domain names was sufficient use to constitute trademark infringement. Principles of English law were applied in that case because both parties were domiciled in England. The relevance of the well-known status of the Complainant's ABTA mark is, however, relevant to the circumstances of this administrative proceeding.
WIPO Case No. D2000-0090 Marconi Data Systems v. IRG Coins & Ink Source, Inc.
There the domain name in issue was , the Complainant being the owner of the registered trademark INKSOURCE in the United States of America, a well-known mark under which many hundreds of millions of dollars worth of inks and ink-related goods had been sold in the United States. The Domain name was not actually used although one of the Respondents was said to intend to use it to advertise and promote its own ink products. The Panel held that, per Telstra, inaction can in appropriate circumstances constitute bad faith use. There bad faith was found by reason of the Respondent having constructive notice of the Complainant's INKSOURCE trademark before registering the domain name in issue, the Respondent's said stated intention to use that domain name "in direct competition with the Complainant", and its failure to file a Response to the Complaint.
WIPO Case No. D2000-0172 Sanrio Company Ltd and Sanrio Inc. v. Neric Lau
There the domain name in issue was . The Complainants were a Japanese company and its US subsidiary, who owned retail service mark registrations for SANRIO SURPRISES and who were the registrants of the domain name which they used to make Internet sales of a wide variety of goods. They had been using the SANRIO mark for over 25 years. The domain name in issue was not used. The Panel held it was clear that the so-called passive holding of a domain name can nevertheless support a finding of bad faith use and, under the circumstances of that case, found there to be evidence of such bad faith use by the Respondent.
WIPO Case No. D2000-0239 J García Carrión S.A. v. José Catalán Frías
This Decision is in Spanish and none of the Panellists in this case are Spanish speakers. Nevertheless, it appears that the domain name in issue was and that the Complainant was the owner of the well-known DON SIMON mark for wines. This Complaint contains an English language translation of an excerpt of the Decision, which related to the non-use by the Respondent of the domain name in issue. The Panel held that the passive holding of the domain name in the circumstances of that case constituted use in bad faith.
WIPO Case No. D2000-0515 Advanced Micro Devices Inc v. [No Name]
There the domain name in issue was , the Complainant being the owner of the ADVANCED MICRO DEVICES trademark under which it conducts its well-known worldwide semiconductor and microprocess or business. The domain name in issue was not used by the Respondent. The Panel held, applying Telstra, that under the circumstances of the case the passive holding of the domain name by the Respondent amounted to use in bad faith.
WIPO Case No. D2000-0620 Teledesic LLC v. McDougal Design
The domain name in issue was and the Complainant was the registrant of the US service mark INTERNET-IN-THE-SKY, which was used by it in relation to its telecommunications services. The domain name in issue was in this case used by the Respondent. Applying Telstra, the Panel held that in the circumstances of the case there was bad faith use. Those circumstances included;
- the fact that the Complainant's trademark is fanciful and uses three hyphens between the four words;
- that the domain name in issue was identical with that mark;
- that the Respondent failed to file a Response; and
- that the Respondent's business operated under a completely different name.
WIPO Case No. D2000-0723 Clinica Corachan S.A. v. Fc Team Car SL
This is another Decision in Spanish. The Domain names in issue all used the prefix clinicacorachan with the ".com", ".net" and ".org" suffixes. Clinica Corachan was the Complainant's trading name which it had been using since its foundation in 1924. This Complaint contains an English language translation of an excerpt of the Decision, whereunder the domain names were directed to be transferred to the Complainant, which reads:
"Non-use has already been regarded in other cases as use in bad faith."
WIPO Case No. D2000-0766 Red Bull GmbH v. Harold Gutch
There the domain name in issue was and the Complainant was the owner of the RED BULL trademark under which brand its energy drink is sold in 44 countries worldwide comprising in 1999 some 622 million units. The Complainant was also the registrant of a number of redbull prefixed domain names including a ".com" and a number of national country codes [i.e .de; .ch; .; .at; .se etc]. The domain name in issue was not in use. Applying the Telstra case,. the Panel found bad faith use citing as relevant circumstances;
- the well-known status and reputation of the Complainant's RED BULL mark;
- that any use by the Respondent would lead members of the public to associate it with the Complainant; and
- that any such use would constitute passing-off, trademark infringement and breaches of Austrian and German unfair competition law.
WIPO Case No. D2000-0823 El Rincon del Vago SL & Others v. Nettika SL
This is yet another Decision in Spanish. The Domain name in issue was "" and the Complainants appear to have been the proprietor of a Spanish trademark registration EL RINCON DEL VAGO in Class 38. This Complaint contains an English language translation of an excerpt of the Decision which reads:
"A page without contents including a link to real web page [is] � regarded � as use in bad faith."
6. Discussion and Findings
6.1 The Policy paragraph 4a provides that a Complainant must prove each of the following
- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
6.2 Paragraph 4c of the Policy sets out circumstances which, in particular but without limitation, shall demonstrate the Respondent's rights or legitimate interests to the domain name.
6.3 Paragraph 4b of the Policy sets out circumstances which, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
The Panel have no hesitation in finding, as did the Panel in the FENDI Decision [paragraph 5.5.6 above] that the domain name in issue is identical with the Complainant's trading style of PRADA Boutiques and is confusingly similar with its PRADA registered trademarks. The Complainant therefore succeeds in meeting the requirements of paragraph 4a(i) of the Policy.
6.5 Rights or Legitimate Interests
In the absence of a Response and on the submissions made in the Complaint there is no evidence that the Respondent has any rights or legitimate interests whatsoever in relation to a domain name including, as it does, the exceptionally well-known PRADA trademark. The Complainant, therefore, also satisfies the second leg of the requirements under paragraph 4a(ii) of the Policy.
6.6. Registration and Use in Bad Faith
The Panel is aware of two Decisions under the Policy involving the Respondent in addition to the FENDI Decision [paragraph 5.5.6 above]. These are:
WIPO Case No. D2000-1424 GA Modefine S.A. v. Mark O'Flynn
There the domain name in issue was "" and the Complainant was the owner of the famous ARMANI: GIORGIO ARMANI; and EMPORIO ARMANI trademarks registered in a variety of classes in a great number of countries worldwide. The Respondent's website was, as in this case, stated to be under construction. The Panel found registration and use in bad faith on the following grounds:
- the Respondent when registering the domain name in issue knowingly and purposefully chose a name confusingly similar to the Complainant's ARMANI trademarks;
- those trademarks are famous and widely used;
- in the circumstances, choice of the domain name by the Respondent could not be a mere coincidence;
- the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties; and
- the Respondent had failed to file a Response.
WIPO Case No. D2000-1289 Etro S.p.A. v. Mark O'Flynn and Luciano Carbonetti PGC s.r.l.
There the domain name in issue was "" and the Complainant was the owner of the ETRO trademark in, inter alia, Italy and as a Community Trademark. The Complainant is an Italian Company in the fashion business which trades under the ETRO mark and through a number of ETRO Boutiques both in Italy and elsewhere. Again, the domain name resolved to a website stated to be under construction. The Respondent O'Flynn is the same as the Respondent in this administrative proceeding and the Respondent Carbonetti of PCG srl is the contact for billing purposes of the domain name in issue in this administrative proceeding. The Panellist in the ETRO case is a Co-Panellist in this administrative proceeding. The Panel found registration and use in bad faith on the following grounds:
- the Respondents have registered in bad faith a number of other domain names incorporating the famous trademarks of Italian based fashion houses which suggests that they are not in good faith and intend only to trade on the value of those marks by selling them to the owners of the marks or by otherwise interfering with the right of those owners to use their trademarks in commerce;
- the Respondents have made no actual good faith use of the domain name in issue, the website being stated to be under construction; and
- the Respondents have attempted to sell the domain name for an amount in excess of their documented out of pocket costs directly related to that domain name, which evidences domain name hijacking.
6.7 In the circumstances of this Complaint the Panel have no hesitation in finding that the Complainant here satisfied both legs of paragraph 4a(iii) of the Policy.
7. Decision
For all the forging reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4a of the Policy. The Respondent is a blatant domain name hijacker. Accordingly, the Panel require that the registration of the domain name "" be transferred to the Complainant.
David Perkins
Presiding Panelist
Anna Carabelli
Panelist
Scott Donahey
Panelist
Dated: May 30, 2001
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