Prada S.a. v Paul C. Szigety
Claim Number: FA1104001382508
Complainant is Prada S.a. (“Complainant”), represented by Massimo Introvigne of Studio Legale Jacobacci Sterpi Francetti Regoli De Hass & Associati, Italy. Respondent is Paul C. Szigety (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prada.us>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2011; the Forum received a hard copy of the Complaint on April 11, 2011.
On April 8, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <prada.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 11, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <prada.us> domain name is identical to Complainant’s PRADA mark.
2. Respondent does not have any rights or legitimate interests in the <prada.us> domain name.
3. Respondent registered and used the <prada.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Prada S.a., is an international provider of luxury products in the fashion industry. Complainant holds numerous trademark registrations of its PRADA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,264,243 issued Jan. 17, 1984).
Respondent, Paul C. Szigety, registered the <prada.us> on July 24, 2004. The disputed domain name resolves to Respondent’s website, which displays Complainant’s PRADA mark, purports to offer Complainant’s products, some of which have been determined to be counterfeits.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it has demonstrated its rights in the PRADA mark. Previous panels have stated that a complainant can establish rights in a mark by registering the mark with a trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO). Complainant holds numerous trademark registrations for its PRADA mark with the USPTO (e.g. Reg. No. 1,264,243 issued Jan. 17, 1984). Through registration of the mark with a trademark authority, the Panel finds that Complainant has established rights in its PRADA mark according to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <prada.us> domain name is identical to its PRADA mark. The disputed domain name utilizes the mark in its entirety and only changes it by adding the country code top-level domain (“ccTLD”) “.us.” The Panel finds that the affixation of a ccTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel concludes that Respondent’s disputed domain name is identical to Complainant’s PRADA mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent lacks rights and legitimate interests in the <prada.us> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the Panel determined that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under UDRP ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Here, Complainant has made a prima facie showing in support of its allegations. The Panel is free to assume that Respondent has no rights and legitimate interests under Policy ¶ 4(a)(ii) due to Respondent’s failure to file a response to the Complaint. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel decides to first look at the record and determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before coming to a conclusion.
The record contains no evidence that Respondent owns any service marks or trademarks reflected in the <prada.us> domain name. Therefore, the Panel finds that Respondent does not have any rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant alleges that Respondent is not commonly known by the <prada.us> domain name. The WHOIS information identifies Respondent as “Paul C. Szigety,” which is not similar to the disputed domain name. Complainant additionally alleges that Respondent has never done any legitimate business under the disputed domain name. The Panel concludes that Respondent is not commonly known by the <prada.us> domain name, under Policy ¶ 4(c)(iii), since nothing presented in the record indicates otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that [UDRP] ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name resolves to a website which sells counterfeit products of Complainant either directly or through third-party links. The Panels infers that Respondent profits from the sale of these goods. The Panel finds that Respondent’s use of the <prada.us> domain name to redirect Internet users to its own website and to sell counterfeit items in competition with Complainant’s luxury products is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s use of the <prada.us> domain name disrupts its business. Respondent uses the disputed domain name to operate a website which displays Complainant’s PRADA mark and offers for sale counterfeit goods of Complainant’s luxury brand items either directly or through third-party links. Internet users intending to purchase Complainant’s products may find Respondent’s website and purchase similar products from Respondent or a third-party competitor as a result. The Panel finds that such registration and use of the disputed domain name does disrupt Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Complainant asserts that Respondent’s use of the disputed domain name creates a substantial likelihood of confusion with Complainant’s established business in the fashion industry. Respondent’s resolving website contains Complainant’s mark and offers for sale counterfeit products of Complainant’s goods. Internet users searching for Complainant online may find Respondent’s website instead and be misled as to Complainant’s sponsorship of, or affiliation with the website and offered products. Respondent attempts to profit from this confusion through the sale of these goods. The Panel finds that such use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prada.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 18, 2011
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