Complainant is Prada S.A. of Luxembourg, Luxembourg, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
Respondent is Ping Zhou of Shenyang, Liaoning, China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2011. On November 16, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On November 16, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 9, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on December 21, 2011. 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
Complainant is a leading company in the field of luxury wear, leather accessories, shoes, luggage and hats. It is the owner of a large international portfolio of registered trademarks for the name PRADA including Chinese trademark registration 1159269 issued March 14, 1998. Complainant has built a very substantial reputation in the PRADA name which the Panel now regards as a famous trademark.
There has been no commercial or other relationship between the parties. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant further alleges that the Disputed Domain Name resolves to a website which offers for sale counterfeit copies of Complainant’s goods. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain a decison that a domain name should be cancelled or transferred:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Even though Respondent provided no response to the Complaint and is in default, Complainant must still prove on the balance of probabilities the three elements of paragraph 4(a) of the Policy set out above. Where appropriate, the Panel may nonetheless infer that Complainant’s allegations are true where on the facts it is reasonable to do so (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain names are identical or confusingly similar to the trademark.
Complainant has provided conclusive evidence that it is the owner of valid and subsisting international trademark registrations for PRADA. Panel finds that Complainant has trademark rights in that name.
Panel also finds that the Disputed Domain Name is confusingly similar to the PRADA trademark. The top-level domain name “.org” can be disregarded for the purposes of comparison (see Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561). The Disputed Domain Name wholly incorporates Complainant’s trademark and merely adds the Italian language words “sito” and “ufficiale” which readily suggests to a speaker of any European language that the Disputed Domain Name would lead an Internet user to Complainant’s homepage.
Panel finds that Complainant has established the first limb of the Policy. B. Rights or Legitimate Interests
Complainant has the burden to establish that Respondent has no rights or legitimate interests in the Disputed Domain Name. Nevertheless, it is well-settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The publicly available WhoIs information does not support any conclusion that Respondent might be commonly known by Disputed Domain Name. There is no evidence that Respondent has trademark rights in the Disputed Domain Name, registered or not. Respondent has not provided any evidence that it used the Disputed Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute. There has been no relationship between the parties.
Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name, which was not rebutted by Respondent.
Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name and therefore Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Complainant provides evidence that the Disputed Domain Name is associated with a website which offers for sale fashion items in the same nature as Complainant’s goods. Complainant asserts those goods are counterfeit copies of Complainant’s goods. It is not necessary for Panel to make any assessment of the veracity of that latter allegation since Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy since Panel has already found that Respondent lacks any rights or interests in the Disputed Domain Name.
The Panel finds that the Disputed Domain Name was registered and 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 Disputed Domain Name be transferred to Complainant.
Debrett G. Lyons
Sole Panelist
Dated: December 29, 2011
Full & Egal Universal Law Academy