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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Michael Faronston

Case No. D2006-0585

 

1. The Parties

Complainant is Prada S.A., Lugano, Switzerland, represented by Studio Legale Jacobacci e Associati, Italy.

Respondent is Michael Faronston, Michigan, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <prada-baby.net> (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2006. On May 10, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 16, 2006.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 27, 2006. 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 Panel finds that the Domain Name Registration Agreement with the Registrar is bilingual – in German and in English. The Panel also notes that the Complaint was filed in English, and that Respondent has not expressed any preferences as to the language of the proceedings. Therefore, and in accordance with the Rules, paragraph 11(a), the Panel decides that the language of this administrative proceeding is English.

 

4. Factual Background

Complainant is an internationally well-known company in the field of fashion, and the owner of various trademarks including the word PRADA throughout the world. These trademarks include:

- PRADA, registered in 43 countries as an International trademark on July 8, 1978, registration number IR 439174, for goods in Classes 14, 16,18, and 25;

- PRADA, registered in 10 countries as an International trademark on May 17, 1990, registration number IR 556183, for goods in Classes 03 and 05;

- PRADA, registered in 44 countries as an International trademark on August 25, 1997, registration number IR 681403, for goods and services in Classes 16, 34, and 42;

- PRADA, registered in the United States of America on February 10, 1998, registration number 2135219, for goods in Classes 09 and 14; and

- PRADA, registered in Italy on April 12, 2000, registration number 0000809346, for goods and services in Classes 14, 16, 18, and 25.

The Domain Name was registered by Respondent on April 13, 2006.

 

5. Parties’ Contentions

A. Complainant

1. The Domain Name is confusingly similar to the PRADA trademarks in which Complainant has rights

The Domain Name is confusingly similar with the trademark PRADA. It combines PRADA with “baby”, a generic word commonly used in the fashion field in order to indicate clothing and accessories for children. This combination may only indicate to an Internet user a line of PRADA products intended for children.

2. Respondent has no rights or legitimate interests in respect of the Domain Name

Respondent has no rights or legitimate interests in respect of the Domain Name.

There is no evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services. Respondent only offers children pornography (in fact, the worst and most vile kind of pornography) for a fee through his Website.

Respondent has never been commonly known in the normal course of business by the Domain Name.

Complainant submits that the use which Respondent makes of the Domain Name is commercial (although, of course, illegal), and the possibility of a non-commercial fair use is thus excluded.

The Domain Name resolves in the offer of services related to children pornography. As the panel stated in Motorola, Inc. vs NewGate Internet, Inc., WIPO Case No. D2000-0079, “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’”.

3. Respondent has registered and used the Domain Name in bad faith

Complainant contends that there is no way that Respondent, an individual located in the United States of America, where Complainant has one of its most significant markets for fashion products, may not have been aware of the famous trademark PRADA, and registration may only have occurred in bad faith.

It may be presumed that “the Respondent (…) knew of the renown of the Complainant’s trademarks”, a finding of “opportunistic bad faith” is in order (See, e.g., Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157, where the panel found that respondent, as “an Italian citizen” could not have ignored that BANCA SELLA is a famous trademark in Italy for banking services).

Complainant has already succeeded in a dispute under the Policy, in Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368, involving the domain name <pradaboutique.com>, where the panel stated that PRADA is such a famous trademark that it should be presumed that Respondent was aware of it.

The Domain Name is used in bad faith, as the redirection to pornographic sites from a Domain Name incorporating the trademark of another company is, per se, evidence of bad faith. See, e.g. 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; Simple Shoes, Inc. v. Creative Multimedia Interactive, NAF Case No. 0008000095343, according to which “linking a domain name that is identical or confusingly similar to Complainant’s mark to a pornographic site is evidence of registration and use in bad faith”.

The above decisions refer to cases 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 the “pornosquatter” does not own is used; (b) the site to which the user is redirected is obviously pornographic; (c) the site is commercial, i.e. in order to access further pornographic services the Internet user is invited to pay. In this case, the situation is even worse, since the case involves an illegal form of pornography using children.

That Respondent operates in bad faith is thus obvious. The damage for Complainant, owner of one of the prestigious trademarks in the world, is also clearly potentially disastrous, since the trademark will be associated with “kiddie porn” and the illegal activities of the Respondent.

Complainant requests that the Domain Name be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004:

“Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”

As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443:

“Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided evidence and has thus established its rights in the trademark PRADA, obtained through various registrations in many countries, including the United States of America.

Furthermore, Complainant has provided evidence about its activities as one of the leaders in the fashion industry. This information is sufficient for the Panel to conclude that Complainant is popular among consumers, and the trademark PRADA is well-known and associated with the fashion products of Complainant.

It is an established practice to disregard the gTLD “net” for the purposes of the comparison under Policy, paragraph 4(a)(i).

The Domain Name contains the word “prada” and the common English word “baby”, divided by hyphens. The word “baby” in the Domain Name is descriptive in its character and its combination with the highly-distinctive word “prada” clearly refers to offering of fashion products of the Complainant for small children. Therefore, the combination makes the Domain Name confusingly similar to the trademark. Minnesota Mining and Manufacturing Co. v. Mark Overbey, WIPO Case No. D2001-0727.

Therefore, the Panel finds that Complainant has established the first element of the test, required under the Policy, paragraph (4)(a).

B. Rights or Legitimate Interests

Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard.

Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name. 

Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any legitimate reason for the registration or use of the disputed Domain Name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c)- or any other circumstance- is present in its favor.

In fact, the only information available about Respondent is the Whois information, provided by the Registrar, and the content of the website, associated to the Domain Name.

The Whois information contains no evidence of rights or legitimate interests of Respondent in the Domain Name, apart from its rights as registrant of the latter.

The Panel notes that even though the website with the Domain Name does not resolve to an active website, the Complainant has documented that the website associated with the Domain Name used to offer paid access to child pornography. It cannot be disputed that according to any contemporary principles of law that child pornography is per se illegal. The inevitable consequence of this is that the use of the Domain Name for such purposes cannot be regarded as bona fide use that can establish rights or legitimate interests in the Domain Name.

Therefore, as the evidence supports the contentions of Complainant, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Complainant is known as one of the leaders in the fashion industry, and its trademark is established in the market and known among consumers.

The Whois information about Respondent shows that it is based in the United States. This is one of the major markets for the products of Complainant. The Domain Name reproduces the distinctive trademark of the Complainant with the added word “baby”, thus creating a reference to PRADA fashion products for children.

These facts support a finding that Respondent had knowledge of Complainant’s trademark and its goodwill at the time of registration of the Domain Name, and that Respondent’s primary purpose in registering and using the Domain Name was to attract, for commercial gain, Internet users to these websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites and the products on these websites. This constitutes bad-faith registration and use of the disputed Domain Names under Policy, paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408.

Moreover, the Domain Name has been associated with a child pornography website. This activity further supports a finding of bad faith registration and use of the Domain Name, as Respondent has registered and used a Domain Name is which he has no rights or legitimate interests, for the purposes of pursuing an illegal activity. Club Monaco Corporation v. Charles Gindi, WIPO Case No. D 2000-0936. Such use of the Domain Name also tarnishes the distinctiveness and repute of Complainant’s trademark. Ferrero S.p.A. v. Alexander Albert W. Gore, WIPO Case No. D2003-0513; Valor Econфmico S.A. v. Daniel Allende, WIPO Case No. D2001-0523.

Therefore, the Panel concludes that Complainant has established the third element of the test under the Policy, paragraph 4(a).

 

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 <prada-baby.net> be transferred to the Complainant.

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Assen Alexiev
Sole Panelist

Dated: July 11, 2006