Prada S.A. v. Ms. Jenny Saputo

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Prada S.A. v. Ms. Jenny Saputo

Case No. D2003-0895

1. The Parties

The Complainant is Prada S.A., a Luxembourg company, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Ms. Jenny Saputo, Montréal, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <boutiqueprada.net> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2003. On November 11, 2003, the Center transmitted by email to Wild West Domains, Inc., a request for registrar verification in connection with the domain name at issue. On November 11 and 20, 2003, Wild West Domains, Inc., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 November 20, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2003.

The Center appointed Louis-Bernard Buchman as the Sole Panelist in this matter on January 19, 2004. 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. The Center notified on January 27, 2004, the Complainant that the Panel requested from the Complainant an Amendment to the Complaint, which the Complainant duly submitted on January 28, 2004. The Center notified the parties on January 30, 2004, that it had been instructed by the Panel to grant the Respondent until February 6, 2004, to respond to the Amendment to the Complaint. No submission was received from the Respondent within the time granted.

4. Factual Background

The Complainant which is internationally well-known in the field of Italian fashion, is the owner of several hundreds trademarks including the word PRADA, registered throughout the world, including in Canada where the Respondent is located. They cover mostly, but not exclusively, clothing, shoes, tissues, fabrics, fashion accessories, belts, watches, jewellery, and fragrances.

5. Parties’ Contentions

A. Complainant

The Complainant contends that PRADA is a famous trademark, having been registered and being still registered in many countries around the world, including Canada, that the domain name at issue is confusingly similar with the trademark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.

In the Complaint as amended, Complainant agrees, in accordance with Paragraph 3(b)(xiii) of the Rules, to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts where the Respondent is located.

Identity or confusing similarity

In respect of the first one of these contentions, the Complainant states essentially

the following: "The domain name boutiqueprada.net is confusingly similar

with the trademark PRADA. In fact, it combines PRADA with ‘boutique’, a generic

word in the fashion field."

Rights or legitimate interests

The Complainant contends that the Respondent has no rights or legitimate interests

in respect of the domain name at issue, as there is no evidence, before the

dispute, of the Respondent’s use of, or demonstrable preparation to use, the

domain name or a name corresponding to the domain name in connection with a

bona fide offering of goods or services; that the Respondent has never

been commonly known in the normal course of business by the trademark, trade

name or domain name PRADA or BOUTIQUE PRADA; that the use which the Respondent

makes of the domain name is commercial; and that the possibility that the Respondent

is making a legitimate non-commercial fair use of the domain name is difficult

to conceive, insofar as it is used to redirect Internet users to a pornographic

website.

Registration and use in bad faith

The Complainant contends that the Respondent knows or should have known from

a cursory Altavista or Google search that PRADA is a famous registered trademark;

that the Respondent has registered several other domain names similar to famous

Italian registered trademarks; that the site to which the Internet users are

directed is commercial, i.e. to access further pornographic images the Internet

user is invited to pay; that actions that create, or tend to create, customer

confusion and dilution of the trademark violate trademark law and are per se

evidence of bad faith, and that the Respondent is engaging in pornosquatting,

i.e. a situation where a cybersquatter tries to take advantage of a well-known

trademark and/or trade name to attract Internet users to a pornographic website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint

on the basis of the statements made and documents submitted and in accordance

with the Policy, these Rules and any rules and principles of law that it deems

applicable.

Applied to this case, Paragraph 4(a) of the Policy directs

that the Complainant must prove each of the following:

(a) that the domain name registered by the Respondent is identical

or confusingly similar to a trademark or a service mark in which the Complainant

has rights;

(b) that the Respondent has no rights or legitimate interests

in the domain name, and;

(c) that the domain name has been registered and is being used

in bad faith.

A. Identity or Confusingly Similarity

Firstly, the Panel notes from the evidence submitted in this case, that PRADA

has been duly registered as a trademark (see Annex 1 to the Complaint), including

in Canada. Not all of the registrations are in the name of the Complainant,

as many are in the name of Prefel S.A., Luxembourg, but the Panel notes from

Prada S.A. v. Mark O'Flynn, WIPO Case

No. D2001-0368, that the Complainant was formerly named Prefel S.A., and

in view of the fact that the Complainant’s contention of being the rightful

owner of the registered trademarks remained undisputed, there is sufficient

evidence that the Complainant is indeed the owner of numerous PRADA trademarks.

The domain name at issue <boutiqueprada.net> is a combination of the

distinctive word ‘prada’ and the descriptive word ‘boutique’, which was ruled

to be a general term commonly used in order to indicate the shop through which

fashion products are commercialized (Etro S.p.A. v. Messrs. Mark O’Flynn,

Luciano Carbonetti PGC s.r.l., WIPO Case

No. D2000-1289, concerning <etroboutique.com>). Moreover, it has been

ruled in GA Modefine S.A. v. Mark O'Flynn, WIPO

Case No. D2000-1424 (concerning <armaniboutique.com>), that "…

the Complainant’s trademark … constitutes the core element of the domain name

…" and "… although the Respondent’s domain name is composed of the

word ‘armani’ and the (descriptive) word ‘boutique’, the first of these terms

is incontestably the principal part of the domain name." As was ruled in

Prada S.A. v. Roderick G. Arnold, WIPO

Case No. D2002-0928 (concerning <pradacasa.com>), the addition

of the prefix ‘boutique’ does not diminish the attractiveness of the word ‘prada’.

Consequently, the Panel finds that the domain name at issue <boutiqueprada.net>

is confusingly similar with the trademark PRADA.

B. Rights or Legitimate Interests

From the evidence available, it can be noted that the Complainant has not licensed

or otherwise permitted the Respondent to use its trademarks, to distribute its

products, or to apply for any domain name incorporating its trademarks. There

is no evidence that the Respondent, whose name is not Prada, is commonly known

by the domain name, and by not submitting a response, the Respondent has failed

to invoke any circumstance which would indicate the existence of any right or

legitimate interest she would have in the domain name at issue, whereas the

Complainant has established a prima facie evidence that the Respondent

has no rights or legitimate interest in the domain name, based inter alia

on the circumstance that the Respondent is using the domain name to direct

Internet users to a pornographic website. In the view of this Panel, such a

use implies, absent any contrary evidence or any exculpating circumstance, the

lack by the Respondent of any rights or legitimate interests in respect of the

domain name, as required pursuant to Paragraph 4(a)(ii) of the Policy.

C. Registration and Use in Bad Faith

The evidence submitted in this case suggests that bad faith is present in the

meaning of Paragraph 4(b)(iv) of the Policy. As was ruled in GA Modefine

S.A. v. Mark O'Flynn, WIPO Case No. D2000-1424

(concerning <armaniboutique.com>): "When registering the domain name,

the Respondent knowingly and purposefully chose a name which is confusingly

similar to Complainant’s trademarks. … In view of the above-described fame of

the Complainant’s trademarks, the choice of the domain name by Respondent could

not result from a mere coincidence. Respondent could not have been unaware of

Complainant’s trademarks, and by knowingly choosing a domain name consisting

of Complainant’s trademark ARMANI followed by the word ‘boutique’, Respondent

intentionally created a situation which is at odds with the legal rights and

obligations of the parties." Indeed, the Panel finds that the rationale

underpinning the above WIPO decision applies also in this case, and because

the Respondent and her business have no connection to the world of fashion and

to the business of the Complainant in particular, and has failed to demonstrate

any bona fide use of the domain name, conduct of the Respondent

in registering the domain name <boutiqueprada.net> amounts to acting in

opportunistic bad faith, as was held in Veuve Clicquot Ponsardin, Maison

Fondée en 1772 v. The Polygenix Group Co., WIPO

Case No. D2000-0163, and Parfums Christian Dior v. Javier Garcia Quintas

and Christiandior.net, WIPO Case No. D2000-0226.

In the first case, the Panel noted that <veuvecliquot.org> is so obviously

connected with such a well-known product [VEUVE CLIQUOT champagne] that its

very use by someone with no connection with the product suggests opportunistic

bad faith. In the second case, it was also suggested that "the Domain Names

are so obviously connected with such a well-known name and products that its

very use by someone with no connection with the products suggests opportunistic

bad faith [quoting Veuve Cliquot]. In the absence of contrary evidence,

the Panel finds that the Respondent knew of or should have known of the Complainant’s

trademark and services at the time Respondents registered the Domain Name given

the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark."

Furthermore, regarding pornography, it was decided in Motorola, Inc. v.

NewGate Internet, Inc., WIPO Case No.

D2000-0079, that "while 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 finding

that redirection to pornographic sites from a domain name incorporating a well-known

trademark is, per se, evidence of bad faith has been confirmed by several

other WIPO Panel decisions, such as: Ty, Inc. v. O.Z. Names, WIPO

Case No. D2000-0370, finding that absent contrary evidence, linking

the domain names in question to graphic, adult-oriented websites is evidence

of bad faith; Oxygen Media, LLC v. Primary Source, WIPO

Case No. D2000-0362, finding bad faith even where Respondent merely threatened

to develop the domain name in question into a pornography site; and Six Continents

Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022,

noting that "the diversion of the domain names to a pornographic site is

itself certainly consistent with the finding that the Domain Name was registered

and is being used in bad faith." Furthermore, the Panel finds that the

Respondent could hardly ignore that a domain name, <pradaboutique.com>

(which is almost identical to the domain name at issue) was transferred to the

Complainant pursuant to WIPO Case No.

D2001-0368, and that this circumstance reinforces the bad faith use by the

Respondent of the domain name at issue.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, and consistent with a series of previous WIPO decisions

under the Policy involving the PRADA trademark, the Panel orders that the domain

name <boutiqueprada.net> be transferred to Complainant Prada S.A.

Louis-Bernard Buchman

Sole Panelist

Dated: February 10, 2004

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