The Complainant is Philipp Plein of Lugano, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Li Ning of Beijing, China.
The disputed domain names <philipppleinbaratas.com>, <philipppleinparis.com>, <philipppleinsaleshop.com> and <ropaphilippplein.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2016. On October 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 November 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2016.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 25, 2016. 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.
The Complainant is Philipp Plein from Lugano, Switzerland.
The Complainant owns several trademark registrations for PHILIPP PLEIN, including the following:
|
Trademark |
Registration Number |
Registration Date |
Jurisdiction |
|
PHILIPP PLEIN |
794860 |
December 13, 2002 |
International Trademark |
|
PHILIPP PLEIN |
002966505 |
January 21, 2005 |
European Union Trademark |
The Respondent is Li Ning, domiciled in Beijing, China.
The disputed domain name <philipppleinsaleshop.com> was registered on September 20, 2016.
The disputed domain name <ropaphilippplein.com> was registered on September 21, 2016.
The disputed domain name <philipppleinparis.com> was registered on October 21, 2016.
The disputed domain name <philipppleinbaratas.com> was registered on October 25, 2016.
The Complainant argues the following:
(I) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Complainant is the owner of the PHILLIP PLEIN trademarks which protect amongst others, goods from class 25.
That the Complainant’s name is Phillip Plein.
That the trademark and the disputed domain names contain identical words.
That the goods offered by the Respondent under the disputed domain names are confusingly similar to the goods protected by the trademarks of the Complainant.
That the words “sale”, “shop”, “ropa”, “paris” and “baratas” are non-distinctive and do nothing to distinguish the disputed domain names from the Complainant’s trademark PHILLIP PLEIN.
(II) The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names.
That the Respondent does not own a registered trademark. That there is no relationship between the Complainant and the Respondent.
That the disputed domain names are being used to sell counterfeit goods.
That the disputed domain names were registered after the Complainant’s trademarks were registered.
(III) The disputed domain names have been registered and are being used in bad faith.
The Complainant argues that, since there is no relationship between the Complainant and the Respondent, the Respondent uses the disputed domain names with the purpose of selling counterfeit goods.
That the registration of the disputed domain names was primarily for the purpose of disrupting the Complainant’s business.
That the Respondent has used the disputed domain names and copied parts of the Complainant’s homepage. That by doing so, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademarks and goods.
That the addition of the term “saleshop” gives the false impression that the website “www.phillipppleinsaleshop.com” is an official online shop for sales of Philipp Plein products.
That the addition of the term “paris” gives the impression that the website it resolves to, is related to the Complainant’s shop in Paris.
The Respondent did not reply to the Complainant’s contentions.
According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
As the Respondent has failed to file a response to the Complainant’s assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. The Panel will determine whether those facts constitute a violation of the Policy, sufficient to order the transfer of the disputed domain names (see, Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).
The Complainant is the owner of trademark registrations for PHILIPP PLEIN in many jurisdictions, including an International trademark registration that covers China, where the Respondent has declared to have his domicile.
The disputed domain names <philipppleinbaratas.com>, <philipppleinparis.com>, <philipppleinsaleshop.com> and <ropaphilippplein.com> are confusingly similar to the Complainant’s trademark PHILIPP PLEIN, as they include said trademark in its entirety.
The addition of the generic Top-Level Domain (“gTLD”) “.com” in this case is immaterial for purposes of assessing confusing similarity. For the referenced reason, the Panel will not take into account the gTLD “.com” (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).
Moreover, the Panel notes that, according to the evidence provided by the Complainant, its marks protect clothing and footwear goods, which could in any given situation be related to the words “sale”, “shop”, “ropa” (“clothes” in Spanish), or “barata” (“sale” in Spanish).
The addition of the term “ropa”, increases the confusing similarity with the disputed domain name <ropaphilippplein.com> as it is descriptive of the Complainant’s products, and is therefore insufficient to avoid a finding of confusing similarity under the first element of the UDRP (see Fluke Corporation v. Supremelines Co., Ltd, WIPO Case No. D2015-1619).
The addition of the terms “sale”, “shop” and “barata”, increases the confusing similarity for the disputed domain names <philipppleinsaleshop.com> and <philipppleinbaratas.com>, as Complainant’s mark is used in connection with sales and shops of clothing and footwear (see TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361).
Finally, the addition of a geographical term to a domain name is insufficient to prevent the composite domain name from being confusingly similar to the complainant’s trademark (see AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553). Thus, the term “paris” is insufficient to clear out the finding of a confusing similarity in the disputed domain name <philipppleinparis.com>.
The first element of the Policy has been met.
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
I. before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
II. the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
III. the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant is the owner of the trademark PHILIPP PLEIN around the world, including an international trademark registration and a European Union trademark registration. Moreover, the Complainant’s name is Philipp Plein. On the other hand, nothing on the record suggests that the Respondent has been commonly known by the disputed domain names.
The Complainant claims that he does not have any relationship with the Respondent. The Respondent did not contradict such statement.
According to the Complainant, the disputed domain names are being used by the Respondent to sell counterfeit goods. Considering that no proof was submitted by the Complainant to back such statement, or by the Respondent to rebut it, the Panel will not consider it as a supportive factor for the findings in the present case.
As can be concluded from Annex 6 to Annex 9 of the Complaint, as well as the Panel’s further inspection of the websites to which the disputed domain names <philipppleinsaleshop.com>, <ropaphilippplein.com> and <philipppleinbaratas.com> resolve, the Respondent does not accurately disclose his relationship, or lack thereof, with the trademark owner. According to the evidence in the Complaint, the disputed domain name <philipppleinparis.com> previously had the same or similar content as the other disputed domain names. The Respondent’s unauthorized use of the Complainant’s logo and lack of any disclaimer, suggests to the Internet user that the Respondent’s websites are the official Phlipp Plein websites (see Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).
The disputed domain name <philipppleinparis.com>, currently displays the phrase “Website Disabled”. However, the passive holding of this domain name, in light of the circumstances laid out above, may not prove rights or legitimate interests over said domain name.
Bearing in mind the preceding, it is impossible for the Panel to consider the Respondent’s use of the disputed domain names as fitting of paragraphs 4(c)(i) or (iii). As explained below, the dossier in this case suggests a case of impersonation of the Complainant and his trademarks.
The second element of the Policy has been fulfilled.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
I. circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
II. the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
III: the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
IV. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Complainant owns several trademark registrations, including an international trademark registration which covers China, the place where the Registrant claims to be domiciled. The registration dates of the Complainant’s trademarks largely predate the registration dates of the disputed domain names by the Respondent.
The Complainant’s name and trademark PHILIPP PLEIN are not comprised of descriptive words and their incorporation in the disputed domain names could not be a coincidence. This fact is reinforced by the addition of words like “sale”, “shop”, “ropa” or “barata”, which are terms that are related to the Complainant’s goods. The content of the websites to which the disputed domain names <philipppleinsaleshop.com>, <ropaphilippplein.com> and <philipppleinbaratas.com> resolve and to which the disputed domain name <philipppleinparis.com> previously resloved, leads the Panel to conclude a bad faith intent on the side of the Respondent.
According to the Complainant, the Respondent has copied part of the Complainant’s website and replicated it in the websites to which the disputed domain names resolve. This allegation was not rebutted by the Respondent and has been confirmed by the Panel upon further inspection of the websites to which the disputed domain names <philipppleinsaleshop.com>, <ropaphilippplein.com> and <philipppleinbaratas.com> resolve.
For the previous reasons, the Panel is satisfied that the Respondent knew of the existence of the Complainant, his trademarks and the goods for which they were intended, at the time of registration.
The Complainant argued that, by replicating parts of his official website, the Respondent has attempted to attract for commercial gain, Internet users to his own website.
Numerous previous decisions under the Policy have found bad faith where a respondent created a website that is nearly identical to the complainant’s website (e.g., The Dow Chemical Company v. dowaychemical eva_hwang@21cn.com +86.7508126859, WIPO Case No. D2008-1078; and Ctrader Limited v. Niko Wibisono, WIPO Case No. D2013-1906).
The Respondent’s unauthorized use of the Complainant’s trademarks and lack of any proper disclaimer lead the Panel to infer that the Respondent has deliberately impersonated the Complainant. This is evidenced through the adoption of four disputed domain names that fully incorporate the PHILIPP PLEIN trademark and are clearly similar to any domain name owned by the Complainant (see Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260).
It is clear to the Panel that the Respondent has attempted to impersonate or create the impression amongst Internet users that the websites resolved by the disputed domain names are related to the Complainant and his trademarks, presumably with the purpose of generating income for the Respondent through illicit means (see LeSportsac, Inc. v. Yang Zhi, WIPO Case No. D2013-0482). By doing so, the Respondent has situated himself in the hypothesis put forward by paragraph 4(b)(iv) of the Policy (see trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014-0365; and Jupiter Investment Management Group Limited v. N/A, Robert Johnson, supra).
It is relevant to point out that the Respondent in this case has taken part in several UDRP proceedings (inter alia TUMI, Inc. v. Li Ning, WIPO Case No. D2014-1893; Goyard St-Honoré v. Li Ning, WIPO Case No. D2014-0846; and Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Li Ning, WIPO Case No. D2014-0588). Amongst said cases, Philipp Plein v. Li Ning, WIPO Case No. D2016-2059, resembles this case closely.
The Respondent, has been a party to numerous proceedings under the Policy. This shows a pattern of conduct, from which bad faith may be found (paragraph 4(b)(ii) of the Policy) (see NBTY, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0835, Societe BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342; see paragraph 3.3, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
Regarding the disputed domain name <philipppleinparis.com>, which currently appears to be inactive, the Panel agrees with the prevailing opinion of numerous panels under the Policy in that under certain circumstances, the passive holding of a domain name can constitute evidence of bad faith.
The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, can in certain circumstances be considered disruptive to the business of the right holder .
The third element of the Policy is fulfilled.
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 names, <philipppleinbaratas.com>, <philipppleinparis.com>, <philipppleinsaleshop.com> and <ropaphilippplein.com> be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: December 10, 2016