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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philipp Plein v. Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Apinya Khamket

Case No. D2015-0072

1. The Parties

The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.

The Respondent is Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Nobby Beach, Australia / Apinya Khamket of Chonburi, Thailand.

2. The Domain Name and Registrar

The disputed domain name <plein-philipp.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2015. On January 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2015, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 2015 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 January 20, 2015.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2015.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on February 18, 2015. 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 Complainant is a manufacturer of clothing and footwear. It owns several trademarks in the mark PHILIPP PLEIN for goods in inter alia class 25 (clothing and footwear), e.g. an International trademark (No. 794860), which was registered December 13, 2002, and a Community Trademark (No. 002966505), which was registered January 21, 2005.

The Respondent registered the disputed domain name on August 20, 2014.

5. Parties’ Contentions

A. The Complainant

The Complainant contends that the disputed domain name contains identical words to those in the trademark in which it has rights and that the disputed domain name therefore is confusingly similar to the Complainant’s trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not registered any trademark corresponding to the disputed domain name. There is no relationship between the Complainant and the Respondent. The disputed domain name resolves to a website that is being used to sell counterfeit goods identical to the goods protected by the Complainant’s trademark. The disputed domain name was registered on August 20, 2014, long after the Complainant’s trademarks were filed and registered.

The Complainant contends that the disputed domain name has been registered and used in bad faith by the Respondent. The Respondent has been using the disputed domain for the purpose of selling counterfeit Philipp Plein goods. The registration of the disputed domain name was primarily for the purpose of disrupting the business of the Complainant. By using the disputed domain name, the Respondent has been intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks and the Complainant’s goods.

B. The Respondent

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

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the holder of several trademark registrations, e.g. an International Trademark with reg. no. 794860 and a Community Trademark PHILIPP PLEIN reg. no. 002966505, which consists of the name PHILIPP PLEIN and the Panel therefore finds that the Complainant has rights to the trademark PHILIPP PLEIN.

The Panel notes that the disputed domain name consists of the name Philipp Plein in reversed order with the addition of the Top-Level Domain “.com”. First, the Panel notes that the mere addition of the Top-Level Domain “.com” is insufficient to differentiate a disputed domain name from a mark. Second, the Panel finds that the disputed domain name, which incorporates the Complainant’s trademark in reversed order, is confusingly similar to the Complainant’s trademark PHILIPP PLEIN and that paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Panel finds that the disputed domain name was registered after the filing and registration of the Complainant’s trademark registrations and notes that the Complainant asserts that there is no relationship between the Complainant and the Respondent. The Panel consequently finds that the Complainant has made 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 allegations as there is no evidence suggesting that the Respondent has any rights or legitimate interests in respect of the disputed domain name.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The Complainant asserts that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. Further, the Complainant asserts that the Respondent is using the disputed domain name to sell counterfeit goods identical to the goods protected by the Complainant’s trademarks. By selling counterfeit goods under the disputed domain name the Respondent is, according to the Complainant, intentionally and for commercial gain trying to attract Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s trademarks and the Complainant’s goods. The Complainant has submitted evidence consisting of printouts of the Respondent’s web page to support the Complainant’s assertion that the Respondent is selling counterfeit Philipp Plein goods.

Against the background of these assertions and the presented evidence, considered together with the findings, under section B. above, that there is no relationship between the Complainant and the Respondent and that the disputed domain name was registered after the filing and registration of the Complainant’s trademarks, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 <plein-philipp.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Date: March 4, 2015

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