WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prada S.A. v. Whois as N/A
Case No. D2008-0135
1. The Parties
The Complainant is Prada S.A., Luxembourg, Luxembourg, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Whois as N/A, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2008. On January 29, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 29, 2008, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. An informal Response was filed with the Center by email on February 12, 2008.
The Center appointed Richard Hill as the sole panelist in this matter on February 28, 2008. 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 the owner of the famous mark PRADA, well-known around the world.
The Respondent registered and used the disputed domain name to point to a website offering escort services and containing erotic pictures of the escort ladies.
5. Parties’ Contentions
A. Complainant
The Complainant is Prada S.A., an internationally well-known company in the field of fashion, and the owner of several hundred trademarks including the word “Prada” throughout the world. The Complainant alleges that its mark PRADA is famous.
According to the Complainant, the disputed domain name is confusingly similar with the trademark PRADA. In fact, Prada is one of the international fashion companies most active in female fashion, with various lines catering to both the middle-aged and the younger market. An association between “girls” and “Prada” may give, at first sight, the impression that this is a website for one of the different Prada fashion lines, and convey the idea that the domain name belongs to, is associated with, or is sponsored by the world-famous Prada company.
The Complainant alleges that there is no way that the Respondent would not have been aware of the famous trademark PRADA, and registration may only have occurred in bad faith, and it cites UDRP cases to that effect, for example Veuve Clicquot Ponsardin v. The Polygenix Group Ltd.,WIPO Case No. D2000-0163, in which the panel noted that “‘VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product [VEUVE CLICQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith”.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the domain name. In particular (i) there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Complainant contends that the Respondent only offers services which appears to be illegal under several national laws, and Panels have consistently found that sales of illegal goods or services may never be in good faith; (ii) the Respondent has no connection with Prada and it only uses “Prada Girls” in order to attract customers to its very peculiar business; (iii) the use which Respondent makes of the domain name is commercial (although, illegal in some countries), and the possibility of a non-commercial fair use is thus excluded.
Further, says the Complainant, the domain name is used in bad faith. It appears that the Respondent is engaged in a very old profession, at times referred to as the oldest of them all. The website offers “nudity and erotic pictures of London and UK escorts”, i.e. women who can be booked online for a private meeting. In a word, the Respondent fashionably calls its trade an “escort agency”, although advertising and selling those which clearly appears as thinly disguised sexual services through the Internet is regarded as prostitution and deemed illegal under the law of several countries.
The Complainant cites numerous UDRP cases and states that the present case is one of “pornosquatting”, where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website. In particular: (a) a trademark similar to a famous one the “pornosquatter” does not own is used; (b) the site to which the user is redirected is pornographic or sells sexuals services; (c) the site is commercial, i.e. in order to obtain further services the Internet user should pay. This is a typical case of pornosquatting, although of the worst kind because, says the Complainant, while selling pornography to adults is legal, offering personal sexual services is not (in most countries). The risk of disparagement for a world-famous trademark such as PRADA, usually associated to the highest standards of luxury, should it be associated with sexual services or prostitution sold via Internet is obvious. In the case Prada S.A. v. Ms. Loredana Salvatori,WIPO Case No. D2007-0064, the panel decided in favor of the complainant a very similar case involving the domain name , where one “elite courtesan” was selling her services under the name “Giada Prada”. The panel ordered that the domain name be transferred to the complainant.
B. Respondent
The pertinent part of the Response is reproduced verbatim below.
“I have to say that this domain was bought for me but for my girlfriend [sic] since she does not own a credit card. She is traveling at the moment but I have talked to her.
She expressed the following points of view to me:
Prada has been her nick name for over 10 years. She also used it for work when she was an escort.
The logo of ‘PRADA S.A.’ does not resemble the one she chose for her site, it is a totally different resigned and letters [sic].
The complete name of her agency is prada-girls, not ‘PRADA – GIRLS’.
The site is not even running yet.
It is a legal business in the U.K and in many civilized countries and does not [sic] appreciate people trying to make it look as something immoral.
I advised her to give up the name, but she just won’t (in my point of view, who would pick a shoe brand for an agency name?, doesn’t make much sense to me, not after year of studying the psychological part of marketing) but it is her famous nick name and the one she wants.”
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must establish that;
(i) the domain name registered in the name of the Respondent 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 domain name has been registered and is being used in bad faith.
The Complainant must prove all of these three elements.
A. Identical or Confusingly Similar
The disputed domain name is obviously confusingly similar to the Complainant’s famous trademark PRADA. The addition of the generic term “girls” does not change the likelihood of confusion; Nokia Corporation v. N a/k/a IBCC a/k/a N,WIPO Case No. D2000-0912.
B. Rights or Legitimate Interests
The Respondent has admitted that he acquired the disputed domain name in order to use it for a website for escort services.
The Complainant appropriately cites Motorola, Inc. v. NewGate Internet, Inc.,WIPO Case No. D2000-0079, in which the panel stated:
“While (as the respondent correctly points out) many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a ‘bona fide’ offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be ‘bona fide’.”
The Respondent states that he acquired the disputed domain name for his girlfriend whose nickname is claimed to be “Prada”. However this may be, the Respondent presents no evidence to support this statement. Thus, the Panel holds that the Respondent has not presented any convincing explanation, and much less evidence, that—particularly in view of the fame of the PRADA—mark would suffice to prove a legitimate interest on his part in incorporating the Complainant’s famous trademark into the disputed domain name.
The Panel holds that, on the basis of the evidence submitted, the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered and used for a website for escort services. Since the Complainant’s trademark is famous around the world, the Panel finds that the Respondent’s use of the disputed domain name intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent states that the website at the disputed domain name is “not even running yet”. This is not true. The Complainant has provided evidence showing that the disputed domain name was actually used for a website for a “London escort agency”, showing adult entertainment style pictures, and containing a disclaimer explicitly stating that the site contained erotic pictures of escorts.
Providing false or misleading information to the Panel may, in and of itself be an indication of bad faith, see Morgan Stanley v. Meow, NAF Case No. FA0604000671304.
Therefore, the Panel in this case is satisfied on the available record here that the disputed domain name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Richard Hill
Sole Panelist
Dated: March 4, 2008
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