Prada S.A. (formerly Prefel S.A.) v. Mark O'Flynn

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: <pradaboutique.com> 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@pradaboutique.com;

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 <bancasella.com>. 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 <veuvecliquot.org>. 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 <christiandior.com> and <.net>.

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 <expediatravel.com>. The Complainant

had operated an on-line travel agency service using the domain name <expedia.com>

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 <expediatravel.com> 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 <fendiboutique.com> 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 <gucciboutique.com>; <armaniboutique.com>;

<pradaboutique.com> 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 <ingersoll-rand.net> and

<.org> and <ingersollrand.org>. 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 <infopaq.com> and <smartpaq.com>,

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

InfoSpace.com, Inc v. Tenenbaum Ofer

There the domain name in issue was <info-space.com> 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 <abta.net> 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 <ink-source.com>, 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 <sanriosurprises.com>. 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 <sanrio-surprises.com> 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 <donsimon.com>

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 <advancedmicrodevices.com>,

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 <internet-in-the-sky.org> 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 <redbull.org> 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; .co.uk; .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 "elrincondelvago.com"

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 "armaniboutique.com" 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 "etroboutique.com" 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 "pradaboutique.com" be transferred to the

Complainant.

David Perkins

Presiding Panelist

Anna Carabelli

Panelist

Scott Donahey

Panelist

Dated: May 30, 2001