WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prada S.A. v. Nevis Industries (H.K.) Limited
Case No. D2002-0161
1. The Parties
The Complainant is Prada S.A., of Via Cattori 11, 6902 Lugano, Switzerland, represented by Ned W. Branthover Esq., of Robin Blecker & Daley of New York, NY, United States of America.
The Respondent is Nevis Industries (H.K.) Limited of 35/F, Center Plaza, 18 Harbour Road, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name is .
The Registrar is NameSecure of Concord, California, United States of America.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on February 15, 2002, and in hard copy on February 18, 2002. Receipt of the Complaint was acknowledged by the Center on February 21, 2002. On February 26, 2002, registration details were sought from the Registrar, which replied on March 13, 2002, stating that the disputed domain name is registered with it in the name of the Respondent; the record was created on April 30, 2000, and expires on April 30, 2002; the registrant submitted in the registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name; the language of the Service Agreement is English and the domain name status is active.
On March 13, 2002, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar, and by email (without attachments).
The Center included with that material a letter dated March 13, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was April 2, 2002. No Response was filed. On April 5, 2002, the Center notified the parties of the Respondent�s default.
The Complainant having requested a single-member Panel, on April 29, 2002, the Center formally notified the parties of the appointment of Alan L. Limbury as Panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of May 13, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel considers the Complaint complies with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; no Response was filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings is English, being the language of the Service Agreement.
4. Factual Background
The Complainant is a billion dollar a year fashion business, founded in Milan in 1913. It is the registered proprietor of the famous trademark PRADA in over 100 countries, including the United States, Italy and Hong Kong. The earliest registration was in 1962.
On April 30, 2000 the Respondent, without any licence or other authority of the Complainant, registered the disputed domain name .
On the same day the Respondent also registered the following domain names incorporating the well-known trademarks of others: , , , , , , , , , , , , , , , , , and .
On July 25, 2002, in response to a cease and desist letter from the Complainant, the Respondent said (in part):
"�we would have to change a lot of things already prepared in our company, if we cannot make use of the domain name anymore.
Up to this moment, we have not gone public with the domain name, however, all necessary arrangements have been made. You will certainly understand that changing them involves a lot of time and efforts.
We would be willing to transfer our rights on the domain name to your company, however, seek your understanding for this special situation and kindly ask you to offer us a compensation, deemed fit, when we do so."
Correspondence continued, culminating in an email to the Complainant dated January 3, 2002, in which the Respondent sought US$16,987 for the transfer of the disputed domain name, being the costs it said had been incurred in preparations, stated to include printing of letter heads, brochures, catalogues, advertising material, etc. with the domain name concerned, which had never been used.
5. Parties� Contentions
A. Complainant
The disputed domain name is virtually identical and is confusingly similar to the Complainant�s PRADA trademark. The Respondent has no rights or legitimate interests in the disputed domain name, which it registered and is using in bad faith.
The domain name should be transferred to the Complainant.
B. Respondent
No Response was filed.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed 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 disputed domain name has been registered and is being used in bad faith.
Failure to file a Response
The Panel draws two inferences where the Respondent has failed to submit a response: (a) the Respondent does not deny the facts which the Complainant asserts and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441). See also Hewlett-Packard Company v. Full System (NAF Case No. FA 0094637); David G. Cook v. This Domain is For Sale (NAF Case No. FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (NAF Case No. FA0094925).
Rights in a trademark
The Complainant has provided evidence of its rights in many countries in the registered trademark PRADA and of the international fame of that mark. In Prada S.A. v. Mark O�Flynn (WIPO Case No.D2001-0368) that mark was described by a three-member Panel as "exceptionally well-known".
Identity or Confusing Similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. N a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).
The Panel finds the disputed domain name is not identical to the Complainant�s PRADA mark.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases: BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR (WIPO Case No. D2001-1480); Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO Case No. D2001-1195); Energy Source Inc. v. Your Energy Source (NAF Case No. FA101000096364); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc. (WIPO Case No. D2001-1121) and the cases there cited.
In determining that the domain name was confusingly similar to the trademark SONY, the Panel in Sony Kabushiki Kaisha v. Sin, Eonmok (WIPO Case No. D2000-1007) said:
"The letters "my", to an English language reader, introduce the concept of possessiveness. That which is possessed is the following letters, namely "Sony", which is the Complainant�s trademark. The addition of the letters "my" has the effect of focusing the reader�s attention on the Complainant�s trademark. Accordingly, the Panel considers that a reader of the domain name would be confused into thinking that the domain name is associated with the Complainant".
See also Hugo Boss A.G. v. Dr. Yang Consulting (WIPO Case No. D2000-1109) (); ESPN, Inc. v. MySportC (NAF Case No. 95326) (); I, Inc. v. Delighters, Inc. (WIPO Case No. D2000-0068) ().
For the same reasons, the Panel finds the disputed domain name to be confusingly similar to the Complainant�s PRADA mark.
The Complainant has established this element of its case.
Illegitimacy
The Respondent�s name does not incorporate the word PRADA. The Complainant has not authorized the Respondent to register the disputed domain name, nor to use its trademark. The Respondent is making no use of the disputed domain name.
These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.
The Respondent has made no such showing and accordingly, the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant has established this element of its case.
Bad faith registration and use
The Respondent�s first communication with the Complainant, in response to the first cease and desist letter, sought compensation for the time and effort in changing the preparations that were said already to have been made. The figure eventually nominated, US$16,987, was claimed to represent the costs of printing and advertising material etc. The Respondent admits it has not used the domain name, has not explained why it registered that domain name (nor any of the other domain names it registered on the same day) and has produced no evidence to substantiate its claim to have expended any such sum directly related to the disputed domain name. That sum is clearly vastly in excess of the registration costs.
Under these circumstances, the Panel finds that the Respondent registered the domain name primarily for the purpose of selling that domain name to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
Accordingly, pursuant to paragraph 4(b)(i) of the Policy, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Further, the registration of numerous domain names by the Respondent indicates both an intention on its part to prevent the owners of those trademarks, of which the Complainant is one, from reflecting their marks in corresponding domain names and a pattern of such conduct. The Panel finds this also to be evidence of both bad faith registration and use, pursuant to paragraph 4(b)(ii) of the Policy.
The Complainant has established this element of its case.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name be transferred to the Complainant.
Alan L. Limbury, Esq.
Sole Panelist
Dated: May 9, 2002
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