The Complainant is Philipp Plein of Lugano, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is zhangming li of Nanjing, China.
The disputed domain names <philippeplein.com> and <philipppleinscarpe.com> are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2017. On January 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <philipppleinscarpe.com>. On January 25, 2017, 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. On January 26, 2017, the Complainant submitted an amended Complaint, adding the disputed domain name <philippeplein.com> to this proceeding. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <philippeplein.com>. 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 together with the amended 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 February 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 22, 2017.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 28, 2017. 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 in this proceeding is Philipp Plein, a German fashion designer who founded the luxury brand by the same name.
The Complainant has proven to be the owner of the PHILIPP PLEIN mark.
The Complainant is inter alia the owner of the following trademarks:
PHILIPP PLEIN (word), international trademark registration no 794860, registered on December 13, 2002, classes 3, 14, 18, 20, 21, 24, 25 (clothing, footwear) and 28;
PHILIPP PLEIN (word), European Union Trademark registration no. 002966505, registered on January 21, 2005, classes 3, 14, 18, 20, 21, 24, 25 (clothing, footwear) and 28.
The disputed domain names <philippeplein.com> and <philippleinscarpe.com> were respectively registered on December 16 and December 22, 2016.
The Complainant's trademark registrations predate the registration of the disputed domain names.
The disputed domain name <philippleinscarpe.com> redirects to a page where (clothing and footwear) items, presented as Philipp Plein goods, are displayed.
The disputed domain name <philippeplein.com> directs to a website described as a Philipp Plein outlet. On this website, the PHILIPP PLEIN trademark and logo are displayed.
In addition, clothing and footwear items indicated as Philipp Plein products are offered for sale on both websites.
The Complainant claims that the disputed domain names are confusingly similar to the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain names; and that the Respondent registered and is using the disputed domain names in bad faith, specifically to sell counterfeit goods.
The Respondent did not reply to the Complainant's contentions.
In order for the Complainant to obtain the transfer of the disputed domain names, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Complainant has established rights in the PHILIPP PLEIN trademark.
The disputed domain name <philippeplein.com> consists of a misspelling of the PHILIPP PLEIN mark and the generic Top-Level Domain ("gTLD") ".com", and is clearly confusingly similar to the same.
The disputed domain name <philipppleinscarpe.com> consists of the PHILIPP PLEIN mark, with the addition of the term "scarpe" (i.e. "shoes" in Italian) and the gTLD ".com".
The addition in the disputed domain name of the generic term "scarpe" is not enough to avoid the confusing similarity with the Complainant's trademark. On the contrary the Panel is of the opinion that this term is more likely to increase the confusing similarity rather than diminish it, owing to the fact that it precisely refers to an item sold by the Complainant under his PHILIPP PLEIN trademark.
This Panel agrees with the previous UDRP decisions, namely that confusing similarity is generally established when the domain name incorporates the complainant's trademark in its entirety, and the addition of generic prefixes and suffixes does not prevent such a finding.
Therefore, the Panel finds the disputed domain names to be confusingly similar to the PHILIPP PLEIN trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. Indeed, it appears that the Respondent is using one of the two disputed domain names to present his website as an official outlet of the Complainant, and both disputed domain names to sell "alleged" (or, according to the Complainant, counterfeit) Philipp Plein goods. In addition, the Respondent does not appear to be commonly known by the name "Philipp Plein" or by a similar name. Moreover, the Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant's contentions that the disputed domain names were registered in bad faith and that they have been used in bad faith.
Indeed, the Complainant gives several sound bases for his contention that the disputed domain names were registered and have been used in bad faith.
Particularly relevant are the Complainant's unchallenged assertions (which the Panel accepts) that the Respondent is using the disputed domain names in order to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's websites, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of its websites; and that the Respondent is using the disputed domain names to sell counterfeit goods.
In addition, owing to the above use of the disputed domain names made by the Respondent, it is inconceivable that the Respondent was not aware of the Complainant's rights in the trademark PHILIPP PLEIN when registering the disputed domain names; and finally, the fact that, if the Respondent did have legitimate purposes in registering and using the disputed domain names, he could have responded to the allegations made by the Complainant in this proceeding.
The Panel finds that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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, <philippeplein.com> and <philipppleinscarpe.com> be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: March 3, 2017