The italien fashion house Prada and its subsidiary Miu Miu has recently and with great success recovered 26 domain names.
Prada has worldwide registrations for PRADA and MIU MIU as trademarks around the world including in China. They first registered an international trademark for ‘Prada’ in 1978 and for ‘Miu Miu’ in 1997.
The complaint was filed on April 21, 2016 to WIPO (the World Intellectual Property Organization Arbitration and Mediation Center).
Prada claimed that the domains are confusingly similar to their trademarks, that the registrants of the domains have no rights or legitimate interests in them, and that they are being used in bad faith to “divert business” to the registrant’s website which is allegedly selling counterfeit products.
WIPO made their decision on June 22, and handed over the domains to PRADA.
“This WIPO decision clearly shows, that it’s possible to regain control of domains registered in bad faith to harm your brand. It highlights the importance of making sure to keep track of the domain registrations containing your brand name. Knowing what domains that contains your brandname, gives you the knowledge needed to take action”, Stine Vestergaard-Hansen, founder of Bulldot, explains.
New domain endings also used to make fraud sites
The 26 recovered domains are however just a drop in the ocean for Prada. According to Bulldot domain monitoring, a high number of domains containing “Prada”, are not owned by the fashion house themselves. The scan also showed that more then 200 of these domains are registered on the new domain endings (new gtlds).
“With the launch of the many new domain-endings it’s getting increasingly important to keep track of all domain registrations. Our analyse of the Prada brand, clearly shows that the new domain-endings are also being used by fraudsters to make fake websites and harm brands”, says Stine.
The domains now handed over to Prada include prada-hot.net, prada-newyear.com, prada-ok.com, miumiu-shoes.com and miumiu-2016.me. The domains were originally registered between 2011 and 2015.
The wipo decision can be read here.
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