WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Chen Mingjie

Case No. D2015-1466

1. The Parties

The Complainant is Prada S.A. of Luxembourg, represented by Studio Barbero, Italy.

The Respondent is Chen Mingjie of Zhoukou, Henan, China.

2. The Domain Name and Registrar

The disputed domain name <prada-sa.com> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2015. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On August 21, 2015, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On August 24, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceeding commenced on September 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 24, 2015.

The Center appointed Francine Tan as the sole panelist in this matter on October 5, 2015. 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

The Complainant is the owner of numerous trade mark registrations for PRADA, including Italian Trade Mark Registration Nos. 1234755 and 1301352 (word mark), Community Trade Mark Registration Nos. 271163 and 5216312, Chinese Trade Mark Registration Nos. 1263052, 1260952 and 1154384.

The PRADA brand dates back to the beginning of the last century when in 1913, Mario Prada opened a luxury store in the Galleria Vittorio Emanuele II in Milan, Italy, selling leather handbags, travelling trunks, leather accessories, beauty cases and other luxury accessories and articles. In 1919, Prada became an official supplier to the Italian Royal family and over the years, the PRADA brand gained increasing renown and prestige. Over the years, the Group has developed a strong network of directly-operated stores encompassing 44 in Italy, 115 in Europe, 2 in the Middle East, 47 in North America, 65 in Japan and 115 in the Asia Pacific region, not including franchise stores and a significant presence in selected high-end multi-brand stores and luxury department stores.

A significant number of press publications in relation specifically to Prada in China, where the Respondent is based, have been made in the past years. In addition, the trade mark PRADA was and has been supported by intensive advertising campaigns worldwide. The brand is featured in important international fashion magazines with broad circulation such as Cosmopolitan, Elle, GQ, Marie Claire and Vogue. Press releases, articles and advertising campaigns have also been published in Chinese newspapers and magazines. The Complainant asserts that as a result of the Complainant's substantial investments in advertising, marketing and sales worldwide, its consistent use of the trade mark PRADA for decades, and its impressive client base across all product groups, PRADA has become a well-known trade mark worldwide.

The Complainant has registered more than 170 domain names consisting of or comprising the trade mark PRADA under several different Top-Level Domains (TLDs) including <prada.com> which was registered on June 9, 1997 and <pradagroup.com>, registered on December 21, 2001.

The web site at "www.prada.com" to which most of the Complainant's registered domain names are redirected, and in particular the Prada e-store "www.prada.com/it/IT/e-store.html" which was launched in 2010, generates a significant number of visits by Internet users every day.

The disputed domain name was registered on April 30, 2015. It points to a web site in English featuring the figurative trade mark PRADA, and from which purported PRADA products are offered for sale. The goods featured on the said web site are offered for sale at very low prices, in some instances corresponding to 10 percent or 20 percent of the prices applied by the Complainant for the sale of genuine PRADA goods. No information about the entity that operates the web site is available and the text displayed under the "Privacy Notice" section appears to be taken from another web site which is dedicated to HERMES products, as it mentions the domain name <hermescheapstore.com> and makes several references to the trade mark HERMES. These elements suggest that the products offered for sale on the Respondent's web site are counterfeit. Moreover, the Complainant's customer service has received communications from several consumers as well as from the Canadian Anti-Fraud Centre about the Respondent's web site and its sale of what appears to be counterfeit goods.

The Complainant sent a notice of trade mark infringement to the Respondent via email, on May 7, 2015, requesting him to immediately cease the infringing use of the disputed domain name in connection with the sale of counterfeit PRADA products. In the absence of a reply from the Respondent, subsequent take-down requests were sent to his attention on May 14, 2015, July 8, 2015 and July 14, 2015. A cease and desist letter was also addressed, on July 20, 2015, to the Respondent by the Complainant's representative. There was no response from the Respondent.

5. Parties' Contentions

A. Complainant

1. The disputed domain name registered by the Respondent is confusingly similar to a trade mark in which the Complainant has rights. The disputed domain name incorporates the whole of the Complainant's trade mark PRADA, which is part of the company name of the Complainant. The fact that it includes the non-distinctive element "-sa" does not affect the confusing similarity with the Complainant's trade mark. The combination of "Prada" with "sa" is an undoubted reference to the legal form, "Société Anonyme", of the Complainant. Therefore, the addition of the suffix "-sa" is not sufficient to avoid the likelihood of confusion between the disputed domain name and the Complainant's trade mark.

2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee or authorized agent of the Complainant nor is he in any other way authorized to use the Complainant's trade marks. The Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name. Upon information and belief, the Respondent is not commonly known by the disputed domain name as an individual, business or other organization and "Prada SA" is not its family name. The WhoIs records of the disputed domain name show that the Respondent's name is "Chen Mingjie".

The Respondent has not provided the Complainant with any evidence of his use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. In light of the confusing similarity of the disputed domain name with the Complainant's trade mark, the publication of the Complainant's trade mark on the web site to which the disputed domain name resolves and the absence of any disclaimer therein as to the absence of affiliation with the Complainant, Internet users would likely be misled as to the source, sponsorship, affiliation or endorsement of the site and of the products offered. Moreover, the products promoted and offered for sale on the Respondent's web site appear to be counterfeit since they are offered at substantially lower prices than the prices applied to genuine PRADA products, and neither the name of the company nor any contact information is published on the Respondent's web site, which makes it impossible to verify the origin of these products. The content of the Respondent's web site, including the use of the Complainant's figurative PRADA trade mark, creates the misleading impression that the Respondent's web site is the official web site of the Complainant. Such use cannot be considered a legitimate noncommercial or fair use without intent for commercial gain because the Respondent has attempted to gain from the sales of counterfeit products.

3. The disputed domain name was registered and is used in bad faith. In light of the extensive use of the trade mark PRADA since as early as 1913, the amount of advertising and sales of the Complainant's products worldwide, also in China where the Respondent is based, the Respondent could not have possibly have been ignorant of the existence of the Complainant's famous trade mark when he registered the disputed domain name. The use of the disputed domain name in connection with a commercial web site where the Complainant's trade mark is misappropriated and counterfeit PRADA products are offered for sale clearly indicate that the Respondent's purpose in registering the disputed domain name was to capitalize on the reputation of the Complainant's mark by diverting Internet users seeking products under the trade mark PRADA to his own web site for financial gain. A likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site and/or the goods offered or promoted through his site has been intentionally created (per paragraph 4(b)(iv) of the Policy).

In addition, the Respondent registered the disputed domain name using incomplete and/or inaccurate contact information and failed to reply to the Complainant's communications and to the subsequent cease and desist letters sent by the representative of the Complainant. The Respondent's calculated efforts to attract users to his own web sites for commercial gain by trading upon famous trade marks is demonstrated by the Respondent's registration and use of several additional domain names which are confusingly similar to registered and well-known trade marks. Examples are <gucc-outlet.com>, <hemes-outlet.us>, <hermes-outlet-us.com> and <raybanreplicagass.com>. The Respondent is also associated with the domain names <prada-outlet-sa.uk> and <prada-outlet-sa.co.uk>. Thus, paragraph 4(b)(ii) of the Policy is applicable in this case since the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and has engaged in a pattern of such conduct.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules stipulates that: "[u]nless 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."

Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:

"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. …".

The language of the Registration Agreement pertaining to the disputed domain name is Chinese. However, the Complaint was filed in English and the Complainant requests that English be adopted as the language of the proceeding. It was submitted that the Complainant communicates in English and would be prejudiced should it be required to translate the Complaint into Chinese as it would cause delay in the proceeding, and this contravenes paragraph 10(c) of the Rules. The Respondent in this case has demonstrated that he understands English since the web site to which the disputed domain name resolves redirects Internet users to a web site published entirely in English. There is no evidence demonstrating that the Respondent is unable to communicate in English.

The Panel rules in this case that it would be appropriate for English to be applied as the language of the proceeding. What is overwhelmingly obvious is the fact that the Respondent's web site is presented entirely in English. Further, the Complainant has shown that the Respondent's other domain name registrations contain generic English terms such as "outlet" and "replica". These circumstances lead the Panel to the belief that the Respondent would not be prejudiced if English is adopted as the language of the proceeding. The Respondent has been given a fair and ample opportunity to be heard in the proceeding and to raise an objection, but has not. Whilst the interests of the Respondent have to be safeguarded, this consideration is by no means without limits and the Panel has to balance that against the interests of the Complainant and the Policy consideration of ensuring that the proceeding takes place with due expedition. Requiring the Complainant to translate the Complaint and the evidence into Chinese would involve additional time and delay the proceeding.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has clear rights in the PRADA trade mark and agrees that it is without doubt a well-known trade mark.

The PRADA mark has been incorporated in its entirety in the disputed domain name and is distinguished only by the addition of the element "-sa". The issue to be considered then is whether this addition of the hyphen and the letters "sa" is sufficient to remove the likelihood of confusion with the Complainant's mark. In this regard, the answer has to be in the negative. The dominant portion of the disputed domain name consists of the word "prada" and this stands out clearly and is separated from the letters "sa" by the hyphen. Clearly, the intention was for the "prada" element of the disputed domain name to be the distinctive and "attractive" portion thereof. The Panel agrees that the letters "sa" in the disputed domain name are probably a reference to "Societe Anonyme" or the "SA" portion of the Complainant's entity name. Whether it is in fact or not is not of fundamental importance since in and of itself, the Panel does not find that the element "-sa" serves to negate the finding of confusing similarity with the Complainant's PRADA trade mark.

The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.

C. Rights or Legitimate Interests

The Panel agrees that PRADA is a well-known luxury trade mark and having regard to this fact, it behoves the Respondent to show with strong and persuasive evidence of his rights or legitimate interests in the disputed domain name. There is indeed prima facie evidence that the Complainant has submitted of a lack of rights or legitimate interests on the Respondent's part: he is not a licensee or authorized agent of the Complainant; he has not been authorized to use the Complainant's trade mark or to register any domain name incorporating the PRADA trade mark; and there is no evidence that he is known by the disputed domain name. Given the high probability that the goods on offer through the disputed domain name are counterfeit, and the lack of disclosure on the site as to the Respondent's lack of relationship to the Complainant, there is also no evidence of a bona fide offering of goods or services.

The Panel finds that the burden on the Respondent to dispute and counter the prima facie case established by the Complainant has not been met. In not responding to the Complaint and participating in the proceeding, the Panel has no basis to find otherwise than that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.

D. Registered and Used in Bad Faith

The Respondent's registration of a domain name which incorporates the whole trade mark, PRADA, the use thereof for the purpose of selling what appears to be counterfeit PRADA products, and the creation of a web site which is intended to pass off as the authentic or official web site of the Complainant, are obvious signs of bad faith registration and use. This is the very kind of cybersquatting and illegitimate activity that the Policy is intended to address and deal with. See paragraph 4(b)(iv) of the Policy:

"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".

The Panel draws a negative inference from the Respondent's silence throughout the proceeding and failure to respond to the Complainant's cease and desist communications. The inaccurate and/or false information submitted by the Respondent when he registered the disputed domain name is also a fact which casts a negative light on the Respondent's intentions.

The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith.

The third element of paragraph 4(a) of the Policy has been satisfied.

7. Decision

For 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 <prada-sa.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: October 19, 2015