Prada S.A. v Huy Dinh

WIPO Case No. D2024-5287

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Prada S.A. v. Huy Dinh

Case No. D2024-5287

1. The Parties

The Complainant is Prada S.A., Luxembourg, represented by Studio Barbero S.p.A., Italy.

The Respondent is Huy Dinh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <miumiuvn.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2024. On December 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 24, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 27, 2024.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on December 30, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2025.

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The Center appointed Willem J. H. Leppink as the sole panelist in this matter on January 22, 2025. 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 following facts are undisputed.

The Complainant is an Italian luxury fashion house. Its MIU MIU brand was established in 1993. The stores.
Complainant trades through a network of directly operated stores in Europe, the Middle East, Africa, North

The Complainant is the owner of trademark registrations including the word element MIU MIU in multiple jurisdictions, including the International Trademark Registration No. 593101 for the word mark MIU-MIU registered on October 16, 1992, in classes 18 and 25.

The Complainant owns several domain names consisting of or comprising the trademark MIU MIU including, inter alia, <miumiu.com>, which was registered on November 9, 1997.

The trademark of the Complainant was registered before the disputed domain name, which was registered on July 18, 2024.

The Complainant sent cease-and-desist letters to the Respondent and to the hosting provider on September 6, 2024, in relation to the disputed domain name. The only response the Complainant received was that the Respondent wrote using the email address confirmed by the Registrar for the registration details of the

disputed domain name, that it seemed “like some bad guy impersonated [his] information and affected [the

Complainant’s] brand”.

At the time of filing the Complaint and at the time of rendering of this Decision, the disputed domain name
resolves to a commercial website, featuring the Complainant’s trademark, publishing images taken from the
Complainant’s official advertising campaigns and (purportedly) offering for sale MIU MIU products.

Moreover, the copyright notice of the website reads “Copyright 2024 © Miu Miu Vietnam”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name incorporates the whole of the Complainant’s Trademark. The fact that the disputed domain name differs by the addition of the two-letter term “vn”, which may be interpreted as the country code for Viet Nam, does not affect the confusing similarity.

Furthermore, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name, because it registered and is using the disputed domain name in bad faith to redirect Internet users to the website featuring the Complainant’s trademark, publishing images of the Complainant’s advertising campaigns and (purportedly) offering for sale MIU MIU products, without providing any disclaimer as to the Respondent’s lack of relationship with the Complainant.

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The disputed domain name is registered to confuse and mislead Internet users into believing that the website is operated by the Complainant or by an affiliated entity with the Complainant’s consent. The use of the disputed domain name as detailed above clearly indicates that the Respondent’s purpose in registering the disputed domain name was to capitalize on the reputation of the Complainant’s trademark. Furthermore, the Respondent configurated Mail Exchange (MX) records, which may support a finding of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, the term “vn”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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Noting the composition of the disputed domain name, the impersonating nature of the content available at the website at the disputed domain name and lack of response, the Panel finds that the Respondent is creating the false impression that the website to which the disputed domain name resolves, is either operated or endorsed by the Complainant.

Even if the Respondent was offering the goods or services marketed by the Complainant, the Respondent would not make fair use of the Complainant’s trademark in the disputed domain name. UDRP panels have recognized limited rights for resellers or distributors to nominally use a trademark for its source-identifying

function, and such fair use is qualified under the so-called “Oki Data” test enshrined in section 2.8.1 of the the requirements of the Oki Data test. Furthermore, noting the above considerations, it is not necessary for the Panel to make any ultimate determination as to the nature of the goods offered at the website, as the evidence clearly shows the Respondent has attempted to pass itself off as the Complainant.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The Panel finds that the Respondent’s registration and use of the disputed domain name in such a manner

demonstrates registration and use in bad faith, because the Respondent has intentionally attempted to
create a likelihood of confusion with the Complainant, most likely in order to increase traffic on the website to
which the disputed domain name resolves and commercially benefit from the Complainant’s trademark
and/or to impersonate the Complainant.

The Panel also notes that it is beyond reasonable doubt that the Complainant and its activities are clearly known to the Respondent and the Respondent sought to profit from the Complainant’s success.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing
off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the

Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 name <miumiuvn.com> be transferred to the Complainant.

/Willem J. H. Leppink/
Willem J. H. Leppink
Sole Panelist
Date: February 3, 2025