A World Intellectual Property Organization (WIPO) panel has again ruled in favor of famous trademarks, holding that a domain name incorporating a famous trademark and a generic term separated by a hyphen constitutes trademark infringement because the domain name is confusingly similar to the famous trademark.

The Complainant, Prada S.A., is an internationally famed fashion and luxury goods business. Prior to 2000, the trademark “PRADA” was registered with the World Intellectual Property Organization, the Office for Harmonization in the Internal Market, the Italian Intellectual Property Office, and the United States Patent and Trademark Office. The Respondent, Prada/Elite Model, of China, registered “topmodel-prada.net” in November 2007 and had been using the domain in connection with the offering of escort services.

The WIPO panel found that “topmodel-prada.net” was confusingly similar to the PRADA trademark for several reasons: (1) the disputed domain name incorporated the PRADA trademark in full (2) although the word “topmodel” is generic and descriptive in character, the hyphen between the words “topmodel” and “prada” does nothing to dispel confusing similarity. Further, the Complainant sufficiently demonstrated that the Respondent did not have any legitimate rights in the disputed domain name, and that the domain was registered and used in bad faith. The WIPO panel thus ordered that the domain name be transferred to the Complainant.

Without any legitimate rights or licenses to use another’s trademarks, the only legal usage of trademarks are through the fair use doctrine. The fair use of another’s trademark means that, under particular circumstances, one may use the trademarks in their own works without permission from the owner. Fair use may be found when “fairly commenting” on another’s trademark (e.g., comparing one’s product to another’s in advertising), or incorporating another’s trademark in the form of a parody or satire.

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By Keith J. Bae, Sedo’s Legal Team