WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PRADA S.A. v. AliReza Khansoltani

Case No. DIR2012-0002

1. The Parties

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

The Respondent is AliReza Khansoltani of Tehran, Islamic Republic of Iran, (“Iran”).

2. The Domain Names and Registrar

The disputed domain names <miumiu.ir> and <prada.ir> are registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2012. On October 8, 2012, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On October 13, 2012, IRNIC 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 disputed domain names.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 October 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.

The Center appointed Adam Taylor as the sole panelist in this matter on December 3, 2012. 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 operates the “Prada” brand, which dates back to the beginning of the last century. In 1913, Mario Prada opened a store in Milan, selling luxury leather handbags, suitcases and accessories. By 1919, Mr. Prada was an official supplier to the Italian Royal family. The brand increased in fame over the years. The business was substantially expanded in the 1970s by Miuccia Prada, Mario’s granddaughter. From 1986 onwards, new stores were opened in New York, Madrid, London, Paris and Tokyo. In 1993, Ms. Miuccia Prada’s creative inspiration led to the establishment of a women’s fashion brand: “Miu Miu”. The Complainant’s group now operates in 70 countries, with some 380 stores worldwide.

The Complainant owns many registered trade marks for PRADA and MIU MIU, including Iranian Trademark Registration No. 85814, dated April 4, 1999, for PRADA (word and device mark) in classes 3, 18, 25, 29 and 30; International Trademark Registration No. 873615 dated November 8, 2005, for PRADA (word mark) in classes 9 and 28 (designating Iran); and Iranian Trademark Registration No. 86138 dated May 5, 1999, for MIU MIU (word mark) in class 3.

The disputed domain names were both registered on August 15, 2006. There is no evidence that either disputed domain name has been used.

The Complainant sent a cease and desist letter to the Respondent on February 22, 2012, together with chasers on March 23, 2012, and April 12, 2012. The Respondent did not respond.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar:

The disputed domain names are identical to trade marks in which the Complainant has rights.

The signs “Prada” and “Miu Miu” are strongly distinctive and do not have any meaning in the Persian language. In light of the distinctiveness and fame of the Complainant’s trade marks, it is apparent that Respondent knew or should have known of the existence of the Complainant’s trade marks when registering the disputed domain names.

Rights or Legitimate Interests:

The Respondent has not provided any evidence of its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute. Indeed the Respondent has passively held the disputed domain names since their registration.

Upon information and belief, the Respondent is not commonly known by the disputed domain names.

The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trade marks.

It is also relevant that the Respondent did not reply to the cease and desist letters sent by the authorised representative of Complainant.

It is sufficient that the Complainant puts forward a prima facie case in order to shift the burden of production to the Respondent.

Registered or Used in Bad Faith:

In light of the extensive use of the trade mark PRADA since as early as 1913, and of the trade mark MIU MIU since 1992, the Respondent could not have been unaware of the existence of the Complainant’s trade marks at the time of registration of the disputed domain names.

The Complainant’s mark is so famous that a panel can legitimately take the equivalent of “judicial notice” of that fact.

The Complainant’s trade marks have been recognized as famous in various Uniform Domain Name Dispute Resolution Policy (“UDRP”) decisions.

With reference to use in bad faith, the disputed domain names were registered but not actively used for a website. The concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding in accordance with the case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The cease and desist letter sent to the address of record of the Respondent was returned to the sender. This indicates that the address provided by the Respondent was false or was not updated. The incorrect contact details in the publicly-available WhoIs database suggest bad faith. The Panel notes that the Center was unable to contact the Respondent using the postal address that was in the publicly-available WhoIs database.

UDRP panels have also held that a failure to respond to a cease and desist letter can be evidence of bad faith.

While the Complainant agrees with the consensus view that the registration of two domain names is generally not sufficient to establish the pattern needed in order to apply paragraph 4(b)(ii) of the Policy, in the present case it should at least be considered as an additional circumstance evidencing bad faith.

In the light of the foregoing, the Complainant has established the existence of the Respondent's bad faith at the time of the registration of the disputed domain names and in their use thereafter.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant undoubtedly has rights in the marks PRADA and MIU MIU by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive, worldwide use of those names over many years.

The Panel concludes that each of the disputed domain names <prada.ir> and <miumiu.ir> is identical to the Complainant’s trade marks for PRADA and MIU MIU, respectively.

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

B. Rights or Legitimate Interests

Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP…If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

The Panel considers that it is appropriate to apply those principles in this case, given that the provisions of the irDRP regarding rights and legitimate interests are identical to the corresponding provisions in the UDRP.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade marks. There is no evidence of any use of, or demonstrable preparations to use, the disputed domain names connection with a bona fide offering of goods or services for the purposes of paragraph 4(c)(1) of the Policy. Nor is there is any evidence that paragraphs 4(c)(2) or (3) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered or Used in Bad Faith

In the Panel’s view, it is obvious that the Respondent registered the disputed domain names with the Complainant in mind, given that each of the disputed domain names reflects a separate distinctive and well-known trade mark of the Complainant.

It is also noteworthy that the Respondent has not responded to the Complainant’s cease and desist letter or to this proceeding, nor has it attempted to provide any evidence of actual or contemplated good faith use of the disputed domain names. Indeed it is difficult to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would be legitimate.

In these circumstances, the Panel concludes that the Respondent registered the disputed domain names in bad faith.

There is no need for the Panel to consider issues of use in bad faith/passive holding because, unlike the UDRP, the irDRP requires only registration or use in bad faith.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

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 names, <miumiu.ir> and <prada.ir> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Dated: December 17, 2012