WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Whois Privacy, Private by Design, LLC / Eric Hanson

Case No. D2021-4420

1. The Parties

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

The Respondent is Whois Privacy, Private by Design, LLC, United States of America (“United States”) / Eric Hanson, Spain.

2. The Domain Name and Registrar

The disputed domain name <pradagroup.agency> (the “Domain Name”) is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2021. On January 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2022, 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 on February 1, 2022.

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 of the Complaint, and the proceedings commenced on February 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 7, 2022.

The Center appointed Haig Oghigian as the sole panelist in this matter on April 5, 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 Background

The dispute concerns the following Domain Name: <pradagroup.agency>, registered with the Registrar on January 12, 2019. The Domain name does not resolve to an active website. As regards to the Respondent, little is known other than the information disclosed by the Registrar, which identifies the Respondent as allegedly located in Spain.

The Complainant is the owner of numerous trademark registrations for PRADA, including the following:

- Italian Trademark Registration No. 362017000069322 for PRADA (word mark), last renewal of the trademark originally filed on July 27, 1977, registered on July 8, 1978, in Classes 14, 16, 18, and 25 (Annexes 3.1, 3.2 and 3.3);

- European Union Trade mark Registration No. 012443362 for, filed on December 18, 2013, and registered on May 13, 2014, in Classes 18, 25, and 35 (Annexes 3.4 and 3.5);

- International Trademark Registration No. 650695 for, registered on December 15, 1995, in Classes 3, 5, 9, 14, 18, 24, and 25 designating also Italy and United States (Annexes from 3.6 to 3.8);

- United States Trademark Registration No. 2162795 for, registered on June 2, 1998, in International Classes 18 and 25 (Annex 3.9);

- European Union Trade mark Registration No. 271163 for PRADA (word mark), filed on September 3, 1996, and registered on November 8, 2000, in Classes 9, 16, and 21 (Annex 3.10).

5. Parties’ Contentions

A. Complainant

The following information has been taken from the Complaint.

The Prada brand dates back to the beginning of the last century. In 1913, Mario Prada opened a luxury store in the Galleria Vittorio Emanuele II in Milan, selling leather handbags, travelling trunks, leather accessories and beauty cases, luxury accessories and articles of value. Because of its exclusively designed goods, handcrafted using fine materials and sophisticated techniques, Prada rapidly became a point of reference for European aristocracy and the one of the most elegant members of the haute-bourgeoisie in Europe.

Over the years, the Group has developed a strong network of Directly Operated Stores encompassing Europe (229), United States (107), Japan (85), Middle East and Africa (22), and Asia Pacific (198), accompanied by franchise stores and a significant presence in selected high-end multi-brand stores and luxury department stores. Prada today operates in 70 countries with approximately 13,988 employees.

In order to protect its trademark PRADA on the Internet and promote its brand online, the Complainant registered over 260 domain names consisting of or comprising the words PRADA under several different Top-Level Domains (see the full list in Annex 6), including, inter alia, registered on June 9, 1997.

The Complainant’s website “www.prada.com” has become the brand’s global flagship

On January 23, 2020, the Complainant’s representative sent a Cease & Desist letter to the Respondent, to the shielded email address indicated in the public WhoIs records, requesting the immediate cease of any use of, and the transfer, of the Domain Name to the Complainant. On January 26, 2020, the Complainant’s representative received a reply from the email address disclosed by the Registrar as belonging to the Respondent, who declared to be the “legal owner of the Domain Name (pradagroup.agency)” and requested USD 500 for transferring the Domain Name to the Complainant. The Complainant’s representative promptly replied to such communication, reiterating its arguments and its request to immediately transfer to the legitimate trademark’s owner free of charge. Nevertheless, the Respondent reiterated its request of USD 500 for the transfer of the Domain Name.

The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name, that it was registered in bad faith and that it is confusingly similar to the trademark PRADA. The Complainant alleges that originally, the Domain Name was used to redirect to the Complainant’s genuine website and upon the Complainant’s Cease & Desist letter to the Respondent, the Domain Name began to resolve to a parked page offering the Domain Name for sale, evidencing the Respondent’s intent to capitalize on the Complainant’s PRADA Mark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name registered by the Respondent is confusingly similar to the trademark PRADA in which the Complainant has rights.

The Domain Name fully incorporates the PRADA Trademark. It is now trite law that a domain name that wholly incorporates a registered trademark is enough to conclude that there is a confusing similarity. This conclusion must remain unchanged even if other words are added to the domain name.

The Panel agrees with the Complainant that the Domain Name is identical or confusingly similar to the PRADA Trademark. The Panel is also of the view that the Complainant has demonstrated to the Panel’s satisfaction that it has the rights to the PRADA Trademark as per the registration of the PRADA Trademark and also of its commercial use.

The Domain Name incorporates the whole of the Complainant’s PRADA word trademark. The fact that the Domain Name differs from the Complainant’s trademark by the addition of the element “group” does not prevent the confusing similarity. Indeed, as held in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of generic or descriptive terms would not prevent a finding of confusing similarity under the first element.

See, amongst the decisions addressing situations where terms are used in combination with trademarks, L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Fry’s Electronics, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1435; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066.

Moreover, previous Panels found confusing similarity in cases involving combinations of complainants’ trademarks with the element “group”. See, inter alia, LEGO Juris A/S v. Djuradj Caranovic,WIPO Case No. D2021-2641, where the Panel held that “Accordingly, the addition of the descriptive term ‘group’ does not dispel the confusing similarity arising from the incorporation of Complainant’s LEGO trademark in the disputed domain name”. See also Greenyard NV v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Franck Gauthier, WIPO Case No. D2021-3469 (“the Panel holds that the addition of the term ‘-group’ to the Complainant’s GREENYARD trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark”); and Telus Corporation v. Fortefusion Fortefusion, Wordcounts, WIPO Case No. D2021-0787 (“the disputed domain name combines the Complainant’s 16 registered trademark TELUS as its distinctive element with the term ‘group’. The addition of this descriptive term to the distinctive trademark is insufficient in itself to prevent a finding of confusing similarity and does not serve to distinguish the disputed domain name from the trademark”).

As to the addition of the generic Top-Level Domain “.agency”, many prior decisions found that the addition of a Top-Level Domain is merely instrumental to the use of Internet and shall thus be disregarded in the assessment of confusing similarity (see i.a, Notch Up v. Lori Fulbright, Fulbright LTD, WIPO Case No. D2021-3220, TBWA Worldwide, Inc. v. Karim Bendali,WIPO Case No. D2019-1932). See also section 1.11 of the WIPO Overview 3.0, holding that “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.

In light of the above, it is apparent that the Domain Name is confusingly similar to the prior registered trademark in which the Complainant has rights pursuant to paragraph 4(a)(i) of the Policy

B. Rights or Legitimate Interests

In accordance with paragraph 4 (c) of the Policy, a respondent, in order to demonstrate its rights or legitimate interest can, without limitation, refer and to the following circumstances:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in this file that was adduced by the Respondent to demonstrate any rights or legitimate interests. The Respondent, having been duly notified of the Complaint and the present proceeding, has chosen not to reply to the contentions of the Complainant nor otherwise participated in this arbitration.

There is therefore no evidence that the Respondent was commonly known as “pradagroup.agency”. No evidence adduce in this file demonstrates that the Respondent has used any trademarks similar to the one used in the disputed domain name nor that the Respondent has been authorized to register any domain names including the trademark. Nevertheless, the Respondent has registered the confusingly similar disputed domain name, which couples the Complainant’s trademark with the terms “group” and “agency” Such construction carries a risk of implied affiliation that cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0. Moreover, the Respondent’s use of the Domain Name to previously resolve to the Complainant’s website further reinforces the finding that Respondent sought to mislead users as to the association of the Domain Name with the Complainant. The Respondent’s intent to confuse and capitalize on the reputation behind the Complainant’s PRADA Mark is even more apparent when considering the Respondent offered the Domain Name for sale.

There is no evidence that would show that the Respondent was acting in accordance of any rights or legitimate interests upon registration of the disputed domain name.

There is also no evidence that would show that the Respondent had “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” (see paragraph 4 (c) of the Policy referred above).

Therefore, the Panel concludes that the Respondent has neither rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four examples of bad faith behavior. This list is not exhaustive.

The disputed domain name is being passively held. As found in section 3.3 of the WIPO Overview 3.0, “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name […] would not prevent a finding of bad faith under the doctrine of passive holding”. Under this doctrine, panels will consider a range of circumstances under the broader case circumstances, such as the distinction of a complainant’s trademark, the failure of a respondent to participate in the proceedings, and the implausibility of any
good-faith use to which a domain name may be put.

In this instance, the Panel agrees with the contention of the Complainant and sees no reason for the Respondent to have registered the disputed domain name other than to trade-off of the reputation and goodwill of the Complainant’s reputable PRADA Mark. The Complainant has used its trademark since 1913, which is more than 100 years before the Respondent registered the disputed domain name.

The Panel also concludes that even if the Respondent ignored the rights of the Complainant in the PRADA Trademark, a simple trademark search or a web browser search would have revealed such rights. Thus, this also supports a finding of bad faith. See BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, WIPO Case No. D2010-1187.

It is also clear that because the Respondent is using the word “group” after “prada”, that they were fully aware of the PRADA trademark and tried to take advantage of the confusingly similar disputed domain name.

Moreover, as indicated supra., the trademark PRADA has been extensively used since as early as 1913 in connection with the Complainant’s advertising and sales of PRADA products worldwide and has been widely publicized globally and constantly featured throughout the Internet. Furthermore, the well-known character of the trademark PRADA has been recognized in several prior UDRP decisions issued in favour of the Complainant, including the following: Prada S.A. v. Chen Mingjie, WIPO Case No. D2015-1466 (“The Panel agrees that PRADA is a well-known luxury trade mark”); PRADA S.A. v. Carlo Tafuri, IDT Spa, WIPO Case No. D2015-1421 (“The Panel agrees with those UDRP panels that have previously found that the PRADA mark is well-known with a strong and distinctive reputation”); Prada S.A. v. lin,WIPO Case No. D2012-1554 (“The Panel is satisfied that the Respondent was aware of the Complainant’s famous trade mark when it registered the Domain Name”); Prada S.A. v. Whois as N/A,WIPO Case No. D2008-0135 (“the Complainant’s trademark is famous around the world”); and Prada S.A. v. the peace company, WIPO Case No. D2006-1404 (“This Panel admits the uncontested affirmations made by the Complainant, regarding the widespread publicity and recognition of the trademark PRADA. Moreover, this Panel agrees with Prada S.A. v. Michael Faronston, WIPO Case No. D2006-0585, Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019, Prada S.A. (formerly Prefel S.A.) v. Mark O'FlynnWIPO Case No. D2001-0368 and a considerable number of “PRADA” cases brought under the Policy, in which the respective Panels have found that the trademark PRADA is famous”).

As such, the nature of the domain name itself leads to a conclusion of bad faith registration and use. See Charles Jorden Holding AG v. AAIM, WIPO Case No. D2000-0403.

Lastly, the Respondent had also redirected the Domain Name to the Complainant’s website. Prior panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. Similarly, the use of the Domain Name to resolve to an offer for sale also illustrates the Respondent’s bad faith insofar as it illustrates Respondent’s intent to sell the Domain Name and this change in use came after the Complainant alerted the Respondent to its rights, reinforcing the finding that Respondent sought to capitalize on the reputation and goodwill of the Complainant’s PRADA Mark.

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 Domain Name, <pradagroup.agency> be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: May 9, 2022