Decisión del Panel Administrativo nº D2015-1421 of WIPO Arbitration and Mediation Center, November 19, 2015 (case PRADA S.A. v. Carlo Tafuri, IDT Spa)
| Resolution Date | November 19, 2015 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
Complainant is PRADA S.A. of Luxembourg, represented by Studio Barbero, Italy.
Respondent is Carlo Tafuri, IDT Spa of Torino, Italy, represented by Cunescu, Balaciu & Associates, SCA, Romania.
The disputed domain name [wholesaleprada.com] (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2015. On August 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The Response was filed with the Center on September 11, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 6, 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.
Complainant is the owner of numerous trademark registrations for its PRADA mark, including marks registered in Italy, the European Union (as Community trademarks), and with the World Intellectual Property Organization as an International mark.
In light of Complainant’s substantial investments in advertising, its marketing and sales worldwide, and its consistent use of the PRADA mark for decades in relation to certain high-end consumer goods, PRADA is a well-known trademark in Italy and worldwide in relation to high-end luxury goods.
The PRADA brand dates back to the beginning of the last century. In 1913, Mario Prada opened a store in Milan, Italy, selling leather handbags, travelling trunks, leather accessories and beauty cases, and luxury accessories. Prada became a point of reference for European aristocracy; in 1919, Prada became an official supplier to the Italian royal family. The Prada group saw a turning point in the development of its activities at the end of the 1970s, when Miuccia Prada, Mario’s granddaughter, launched a partnership with Tuscan businessman, Patrizio Bertelli, which combined creativity and business ideas. In the following years, the activities of the two families were brought together within a single Prada group.
In 1983, the Prada family opened a second store on the Via della Spiga in Milan. During the late-1980s, new stores were also opened in New York and Madrid, followed by London, Paris and Tokyo. The first Prada women’s wear fashion show was held in Milan in 1988. In 1993, Miuccia Prada established a new brand ― MIU MIU― designed for women who are interested in sophisticated fashion and lifestyle. MIU MIU offers women’s ready-to-wear leather goods and shoes, and is an important component of the Prada group’s sales. The Prada “Linea Rossa” leisure range, with its “Red Line”, was launched in 1997. In 1999 Prada acquired control of CHURCH’S, a prestigious brand of English footwear. In 2001 Prada acquired control of CAR SHOE, an Italian brand known for driving shoes. In 2003, Prada entered into a licensing agreement with Italian eyewear manufacturer, Luxottica, which currently produces eyewear for the PRADA and MIU MIU brands. The Prada group also began a partnership with the Spanish cosmetics manufacturer, Puig Beauty & Fashion Group, which launched the Prada Woman fragrance at the end of 2004, while the first Prada by LG phone was launched in 2008.
Over the years, the Prada group has developed a network of directly operated stores in Italy (44), Europe (115), the Middle East (2), North America (47), Japan (65) and the Asia Pacific (115), accompanied by franchise stores and a significant presence in high-end multi-brand stores and luxury department stores.
Complainant has submitted evidence to show a large number of press publications were dedicated to Prada in Italy in 2011, when the Domain Name was registered. In addition, the trademark PRADA was and is supported by advertising campaigns worldwide, with advertisements appearing in international magazines with broad circulation such as Elle, GQ, Vogue and Vanity Fair.
Complainant has registered more than 170 domain names consisting of or comprising the trademark PRADA under several different TLDs, including [prada.com], which was registered on June 9, 1997, and [pradagroup.com], registered on December 21, 2001. Most of Complainant’s domain names are redirected to its website at “www.prada.com”.
Respondentis a business-to-business (“B2B”) distribution company established under Italian law and founded in 2009 by the Tafuri family, with headquarters in Torino. It was established as a niche market business for online selling of fashion stock.
The Domain Name [wholesaleprada.com] was registered by Respondent, without authorization of Complainant, on April 4, 2011. The Domain Name is pointed to a web page where the statement “WHOLESALE PRADA” is published, above the phrase “A wholesale distributor of Prada Jeans and clothing for men and women”. The website to which the Domain Name resolves states that Respondent offers “wholesale and stock by the biggest fashion worldwide brands such as Diesel, Fontana 2.0, Rochas, Versace 19.69 Abbigliamento Sportivo Milano, and many more”. Users visiting the website “www.wholesaleprada.com” are invited to subscribe to a form on Respondent’s website at “www.brandsdistribution.com” to receive Respondent’s catalogue and newsletters, and a link redirects to a web page providing further information on Respondent’s ecommerce services.
Complainant contends that a review of Respondent’s website at “www.wholesaleprada.com” makes clear that Respondent is using it to promote its wholesale distribution of PRADA and competitors’ clothing and accessories, through the publication of information and links leading to its website at “www.brandsdistribution.com”. While the domain name [brandsdistribution.com] is registered in the name of a privacy service, the contact details displayed on that site are those of Respondent. In addition, the link “Stocklot” redirects users to Respondent’s website at “www.stocklot.com”, promoting the sale of branded products, including goods manufactured and sold by Complainant’s competitors.
When Complainant became aware of Respondent’s registration and use of the Domain Name, it sent a cease and desist demand letter to Respondent. The letter was addressed to Respondent on April 5, 2011, but apparently Complainant did not receive a reply. Since Respondent did not cease its use of the Domain Name following receipt of the letter, a new request to disable all content hosted at the Domain Name and let it expire was addressed to Respondent on March 30, 2015. Respondent replied to this communication stating:
“We replied years ago.
The domain is totally legal.
If you want to have we can value your purchase offer.”
Subsequent to Complainant’s request to specify what the purchase offer would be, Respondent replied:
“20.000 euro.”
Complainant submits that in light of Respondent’s request of an amount well in excess of the out-of-pocket costs related to the Domain Name, Complainant instructed its representative to file a UDRP Complaint. Before proceeding with the filing, Complainant’s representative sent, on April 24, 2015, a request for disclosure of Respondent’s data to Domains by Proxy, Inc., which was providing proxy service in connection with the Domain Name registration. After sending that request, Complainant’s representative received, on April 28, 2015, an email communication from Respondent, who claimed not to be infringing Complainant’s trademark rights but indicated its availability to consider the sale of the Domain Name. It copied in its communication its representative, with whom the subsequent correspondence concerning the present matter was held. Complainant’s representative sent an email communication to Respondent’s representative on the same day, explaining the reasons why the registration and use of the Domain Name amounted to an infringement of Complainant’s rights and requesting that Respondent transfer the Domain Name free of charge to Complainant. Respondent’s representative replied, on May 8, 2015, denying any violation of Complainant’s rights and asserting that Respondent is a wholesale distributor of Prada and other branded products and is using the website linked to the Domain Name to advertise the sale of products regularly purchased from authorized resellers. He also affirmed that Respondent was available to evaluate different options to settle the matter. Complainant’s representative answered, on the same day, indicating Complainant’s availability to reimburse the out-of-pocket costs of the Domain Name but, following a subsequent exchange of correspondence and telephone conversations, Respondent’s representative confirmed that Respondent would not accept this offer.
In view of the above, Complainant proceeded with the filing of the Complaint.
(i) Identical or confusingly similar
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