{
    "case_number": "CAC-ADREU-004316",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "Prada S.A. is the holding company of the Prada group (whose main manufacturing plants are located in Italy) and the owner of a number of trademarks PRADA on a global scale. Copies of these trademarks, including European Community Trademark 271163, are enclosed with the complaint. PRADA is one of the most renowned trademarks in the world in the fashion field. \r\n\r\nThe PRADA trademarks, the oldest of which date back to 1983, were originally owned by the Italian company, Prada S.p.A., and were subsequently transferred to the Luxembourg company, Prada S.A., the Complainant in this case.\r\n\r\nThe domain name prada.eu was registered by Mr. Lussetti, an Italian national, on July 11, 2006.",
    "other_legal_proceedings": "Procedural History\r\n\r\nThe disputed domain name was the subject matter of Case No. 02928 (the first ADR). In that case, Complainant, Dr. Massimo Introvigne, filed a complaint alleging, interalia, the same allegations in the within proceeding. The first ADR proceeding was decided in favour of Respondent for the following reasons: 1) «Absence of Complainant’s interest to the disputed domain name» and 2) «uncertainty as to the identity of the Prada group company on whose behalf Complainant is acting». Consequently, the first ADR never reached the substantive arguments of the parties.\r\n\r\nPreliminary Issue\r\n\r\nRegarding Respondent’s arguments that a) no legal system permits to repeat two times the same lawsuit and b) that« Absolutely nothing has changed from the previous ADR, nothing new that allows a new ADR». The Panel notes that this is not true. In fact, the parties are different from those in the first ADR. Specifically, the Complainant in the present proceeding is a different legal entity. \r\n\r\nIndeed, the main reason that led to the rejection of the previous complaint was Mr. Introvigne’s lack of standing or other demonstrable rights to the PRADA name. It is, however, undisputable that Prada S.A., has valid rights to the PRADA name and  trademarks. \r\n\r\nThe present Complaint was filed by Prada S.A., which has duly authorized Dr. Massimo Introvigne to act as its legal representative.\r\n\r\nIn view of the above, the Panel sees no impediment to proceed with a decision on the merits of the complaint.",
    "discussion_and_findings": "According to Article 22(11) of Commission Regulation (EC) 874\/2004, the Panel must determine whether the registration of the disputed domain name is speculative or abusive as defined in Article 21 of that Regulation. \r\n\r\nThe Panel shall issue a decision granting the remedies requested under the Procedural Rules in the event the Complainant proves that:\r\n1) The domain name is identical or confusingly similar to a name in respect of which a right is recognised or established by the national law of a Member State and \/or Community law\" and; either \r\n2) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or\r\n3) The domain name has been registered or is being used in bad faith.\r\n   \r\nComplainant has demonstrated to have valid trademark rights on the name PRADA which is identical to the disputed domain name. Accordingly, the Panel finds that the first requirement of the definition of speculative or abusive registration is satisfied.\r\n   \r\nRegarding the question of whether the Respondent has a legitimate interest in the domain name, Article 21(2) of Regulation 874\/2004 states that “a legitimate interest within the meaning of the rules may be demonstrated where:\r\n\r\na) prior to any notice of an alternative dispute resolution (ADR) procedure, the holder of a domain name has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparations to do so; \r\nb) the holder of a domain name, being an undertaking, organisation or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and\/or Community law;\r\nc) the holder of a domain name is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognised or established by national and\/or Community law.\r\n\r\nThese circumstances are not exhaustive.\r\n  \r\nIt is the Panel’s opinion that Complainant has established prima facie that Respondent does not meet any of the above requirements. Furthermore, Respondent has not overcome Complainant’s proofs nor has he proven to have any right or legitimate interest to the domain name for purposes of Paragraph B11(d)(1)(ii) of the Rules. While the Panel agrees with Respondent that it is practically impossible to know every Italian registered trademark, due to the undisputable fame of the PRADA name, Respondent’s assertion that he was not aware of its existence is not credible. As well explained by the Panel in Modern Times Group (MTG) AB v. Stefan Häge, Kriströms Advokatbyrå AB WIPO Case No. DTV2000-0004 (domain name everyday.tv), “In these days when \"cybersquatting\" has become an important issue it falls naturally to assume that a purchaser of a domain name takes adequate actions in order to avoid a violation of another persons trademark rights” and “One must assume that a company that decides to register a domain name with the intention of making real use of the domain name in its business activities on the Internet must have checked if the domain name in question is available for registration in the gTLD’s at least. If there are competitors that use a similar domain name or if the domain name is registered in other TLD, it is reasonable to take precautions in order to avoid confusion or trademark infringement, at least if there is a bona fide intention to offer goods and services under the domain name”.\r\n\r\nRespondent has not provided any explanation regarding his choice of the name PRADA for the disputed domain name that was initialy used to publish information about the RavenNuke76. Indeed, Respondent in his response to the Complaint in ADR 02928 (which was incorporated as a part of Respondent’s response to the present complaint), argued that the RavenNuke76 contents displayed on the default page for the web site www.prada.eu, was “the screen of the very famous PhpNuke, a Content Management System” and that “It shows like every newly installed software, the logo of the developer and links to ravenphpscripts.com”. Namely Respondent explained that he was not linked to and that the RavenNuke76 contents were not his own. Respondent also affirms that he was not making any offer of goods or services since his web site was still in the development phases. In order to demonstrate that he made demonstrable preparations to use the domain name in connection with the offering of goods or services prior to receiving notice of an ADR, Respondent submits that «it has been experienced the use of a Content Management System, which is a complex server-database-browser interface». While, Respondent gave abundant and specific information about the PhpNuke and the RavenNuke softwares, he did not proffer any evidence or otherwise explain what kind of content would have been displayed on his intended website www.prada.eu. Nor did he provide any information regarding the future use of the domain name and why he chose the name PRADA. In fact, in his response to the first complaint, Respondent never mentioned the town of Prada \/Prades and\/or his intention to develop a web site about this town. This Panel thus finds that Respondent has not demonstrated to have used the domain name in connection with the offering  of goods or services  or to have made a credible showing of demonstrable preparation to do so prior to any notice of the dispute.\r\n\r\nRespondent has made a great effort in order to contest the fame of the trademark PRADA and to discredit both PRADA S.A. and Mr. Introvigne. Nevertheless, using Respondent’s own standards to judge about the fame of a name, i.e. Google entries, the Panel notes; the PRADA trademark which reaches now about 39 million entries is much more renowned than trademarks like ARMANI (27 million) and Louis Vuitton (15 million). It is disingenuous, at best, for Respondent to argue that PRADA (between 40 and 50 million entries at the time of Respondent’s response) is not a renowned trademark, while, at the same time, describes the PhpNuke software as “very” famous (13 million entries) and RavenNuke76 as “famous” (raven + nuke about 650.000 entries and RavenNuke76 only 25.000 entries).\r\n\r\nRespondent has not provided any evidence to prove any right or legitimate interest on the domain name prada.eu within the meaning of the Rules.\r\n\r\nOn the contrary, the Panel agrees with Complainant’s assertion that Respondent changed its Web site by making it to look like a Web site for the town of Prades ex post facto  (ADR 02928) as a mere defensive move for countering further action by Prada S.A. \r\n\r\nThe only reasonable inference to be made regarding Respondent’s changes to its website is that same were made after Complainant filed the first complaint.\r\n\r\nThe actual use of the domain name prada.eu and of the related web site, cannot be  considered a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognised or established by national and\/or Community law. On the contrary, Respondent published on the web site prada.eu the following sentences: «PRADA fashion company wants this Prada del Conflent Web site», «Notice that EURID the registry of .eu REJECTED the demand of PRADA fashion of 07-12-2005» and «5 years ago PRADA fashion maked 3 attempts to be quoted in the stock exchange (IPO): 3 times failed and never try again.», giving the impression that in Case no. 02928 the Complaint was rejected because of the \"Prada del Conflent\" connection. Prior attempts to register the disputed domain name prada.eu in the name of PRADA S.A. were rejected due to a lack of rights on the name PRADA and finally that PRADA has economic troubles. This is not a fair or a bona fide use of the domain name.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the domain name PRADA be transferred to the Complainant",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2007-05-27 00:00:00",
    "informal_english_translation": "The disputed domain name was the subject matter of Case No. 02928 (the first ADR). In that case, Complainant, Dr. Massimo Introvigne, filed a complaint alleging, interalia, the same allegations in the within proceeding. The first ADR proceeding was decided in favour of Respondent for the following reasons: 1) «Absence of Complainant’s interest to the disputed domain name» and 2) «uncertainty as to the identity of the Prada group company on whose behalf Complainant is acting». Consequently, the first ADR never reached the substantive arguments of the parties.\r\n\r\nPreliminary Issue\r\n\r\nRegarding Respondent’s arguments that a) no legal system permits to repeat two times the same lawsuit and b) that« Absolutely nothing has changed from the previous ADR, nothing new that allows a new ADR». The Panel notes that this is not true. In fact, the parties are different from those in the first ADR. Specifically, the Complainant in the present proceeding is a different legal entity. \r\n\r\nThe present Complaint was filed by PRADA S.A., which has duly authorized Dr. Massimo Introvigne to act as its legal representative.\r\n\r\nPrada S.A. is the holding company of the Prada group and the owner of a number of trademarks PRADA on a global scale. PRADA is one of the most renowned trademarks in the world in the fashion field. \r\n\r\nThe domain name prada.eu was registered by Mr. Lussetti, an Italian national, on July 11, 2006.\r\n\r\nComplainant has demonstrated to have valid trademark rights on the name PRADA which is identical to the disputed domain name. Accordingly, the Panel finds that the first requirement of the definition of speculative or abusive registration is satisfied.\r\n\r\nRespondent has not provided any evidence to prove any right or legitimate interest on the domain name prada.eu within the meaning of the Rules.\r\n\r\nThe actual use of the domain name prada.eu and of the related web site, cannot be  considered a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognised or established by national and\/or Community law.\r\n\r\nFor all the foregoing reasons, in accordance with the Rules, the Panel orders that the domain name PRADA.EU be transferred to Complainant.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}