The Complainant is Prada S.A., Luxembourg, represented by Studio Barbero, Italy.
The Respondent is 陈友兴 (chenyouxing), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 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 December 27, 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 in English on December 27, 2021.
On December 27, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 27, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2022.
The Center appointed Sok Ling MOI as the sole panelist in this matter on February 9, 2022. 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 BackgroundThe Complainant owns the luxury brand Prada which dates back to 1913 when its founder Mario Prada opened his first store in Milan, Italy. Over the years, the Complainant and its affiliated companies expanded the range of products under the Prada brand and distributed them through directly-operated stores and franchise stores around the world. The Prada e-store was launched in 2010. Today, the Complainant and its affiliated companies operate in 70 countries (including China where the Respondent is based) and employ more than 13,000 employees.
The Complainant is the proprietor of numerous trade mark registrations worldwide for PRADA, including the following:
Jurisdiction
Mark
Registration No.
Class No.
Registration Date
Italy
PRADA
362017000069322
14, 16, 18, and 25
July 8, 1978
International designating, inter alia, China
PRADA
650695
3, 5, 9, 14, 18, 24, and 25
December 15, 1995
China
PRADA
1260952
25
April 7, 1999
The Complainant and its affiliated companies are also the registered proprietor of numerous domain names comprising its trade mark PRADA, including
The disputed domain name was registered on May 2, 2021. According to the evidence submitted by the Complainant, the disputed domain name resolved to a website which reproduced the Complainant’s PRADA trade mark, and purported to offer for sale the Complainant’s sunglasses and perfumes at one point in time. As at the date of the Complaint, the disputed domain name resolved to a website which reproduced the Complainant’s PRADA trade mark, and purported to offer for sale the Complainant’s sunglasses along with the Complainant’s competitor’s sunglasses.
5. Parties’ Contentions A. ComplainantThe Complainant claims that the disputed domain name is confusingly similar to its PRADA trade mark.
The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain name to publish a website purportedly offering for sale identical goods to those offered by the Complainant, without a disclaimer of non-affiliation, was not bona fide. The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name is used to mislead Internet users into believing that the said website is operated by the Complainant or with the Complainant’s consent. The Complainant alleged that the goods offered for sale by the Respondent on its website are counterfeits. The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingPursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the disputed domain name comprises the English word “sunglasses”; and
(c) according to the evidence submitted by the Complainant, the contents of the website to which the disputed domain name resolved were entirely in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present his case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
6.2 Substantive FindingsParagraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the 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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in PRADA by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant’s PRADA trade mark in its entirety. The addition of the word “sunglasses” inserted after the trade mark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the country code Top-Level Domain (“ccTLD”) “.cc” is generally disregarded for the purpose of the similarity assessment.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PRADA trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is 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.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974.)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the PRADA trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “陈友兴 (chenyouxing)”. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “Prada”.
According to the evidence submitted by the Complainant, the Respondent was previously using the disputed domain name to publish a website which reproduced the Complainant’s PRADA trade mark, and purported to offer for sale the Complainant’s sunglasses and perfumes at discounted prices, without any disclaimer of non-affiliation. This suggests that the Respondent is using the disputed domain name to mislead Internet users by creating an affiliation with the Complainant where there is none. According to the evidence submitted by the Complainant, the Respondent subsequently used the disputed domain name to publish a website which reproduced the Complainant’s PRADA trade mark, and purported to offer for sale the Complainant’s sunglasses and those of the Complainant’s competitors (such as FENDI, GUCCI, and VERSACE) at discounted prices, without any disclaimer of non-affiliation. This does not suggest that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. In both instances, the Respondent would not be able to avail himself of the safe harbour defence established by the Oki Data case (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the respondent has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.
The Complainant and its affiliated companies have used PRADA as a trade mark for more than 100 years. Through extensive marketing and advertising over the years, PRADA has become a well-known trade mark around the world, enjoying a strong reputation. There is no doubt that the Respondent was aware of the Complainant’s trade mark when he registered the disputed domain name given that the disputed domain name has reproduced the Complainant’s PRADA trade mark with the additional word “sunglasses” referring to products sold under the Complainant’s trade mark, and purported to offer for sale the Complainant’s sunglasses on its website. Registration of a domain name that incorporates a complainant’s well known trade mark suggests opportunistic bad faith.
In registering and using the disputed domain name that incorporates the Complainant’s trade mark with the additional word “sunglasses”, the Respondent is seeking to create an impression that his website is the Complainant’s official website. Irrespective of whether the goods offered on the Respondent’s website are in fact counterfeit, the reproduction of the Complainant’s trade mark on the Respondent’s website without displaying a clear and accurate disclaimer of a lack of relationship between the Respondent and the Complainant, is indicative of bad faith.
The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to his own website for financial gain. The Panel therefore determines that the Respondent has 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 source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Furthermore, efforts to send the Written Notice to the Respondent at the physical address provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had provided false contact details at the time of registering the disputed domain name. This further suggests a lack of bona fide.
The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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
Sok Ling MOI
Sole Panelist
Date: April 18, 2022