Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
Who we all are...
SUNDAY, 16 MARCH 2008
WIPO: domain "prada-girls.com" registered in bad faith
The WIPO arbitration panel has ruled that the domain name "prada-girls.com" had been registered in bad faith and ordered that the domain be transferred to its legitimate owner, Prada S.A., Luxembourg. The Complainant in the proceedings is the owner of the famous mark PRADA, which is well-known around the world. The Respondent registered and used the disputed domain name to point to a website which was offering escort services and which contained "erotic pictures of the escort ladies". Richard Hill acting as sole panelist ruled that
"[the] disputed domain name is obviously confusingly similar to the Complainant’s famous trademark PRADA. The addition of the generic term “girls” does not change the likelihood of confusion; Nokia Corporation v. Nokia-girls.com a/k/a IBCC a/k/a Nokiagirls.com, WIPO Case No. D2000-0912."
Mr. Hill further stated that
"... [the] Respondent states that he acquired the disputed domain name for his girlfriend whose nickname is claimed to be “Prada”. However this may be, the Respondent presents no evidence to support this statement. Thus, the Panel holds that the Respondent has not presented any convincing explanation, and much less evidence, that—particularly in view of the fame of the PRADA—mark would suffice to prove a legitimate interest on his part in incorporating the Complainant’s famous trademark into the disputed domain name".
On the point of "bad faith" the sole panelist decided that
Posted by: Birgit Clark @ 15.45
Domain names, WIPO Arbitration and Mediation Center,
"... [s]ince the Complainant’s trademark is famous around the world, the Panel finds that the Respondent’s use of the disputed domain name intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent states that the website at the disputed domain name is “not even running yet”. This is not true. The Complainant has provided evidence showing that the disputed domain name was actually used for a website for a “London escort agency”, showing adult entertainment style pictures, and containing a disclaimer explicitly stating that the site contained erotic pictures of escorts. Providing false or misleading information to the Panel may, in and of itself be an indication of bad faith, see Morgan Stanley v. Meow, NAF Case No. FA0604000671304. Therefore, the Panel in this case is satisfied on the available record here that the disputed domain name was registered and is being used in bad faith."
"... [In] accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant."
Case reference: Prada S.A. v. Whois as N/A, Case No. D2008-0135, of 4 March 2008
Sharing on Social Media? Use the link below...
Reader Comments: 0
Post a Comment
MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.
The Class 46 Archive