The Complainant is Philipp Plein of Lugano, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is zhang ming of Shaoguan, China.
The disputed domain names <philipppleinde.com>, <philipppleinfr.com> and <philipppleinpascher.net> (the "Disputed Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2017. On March 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 29, 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.
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 April 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 26, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 3, 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 is an individual who is the founder of the luxury fashion brand "Philipp Plein" that creates and sells various luxury fashion products. The Complainant is the owner of several trademarks for PHILIPP PLEIN, including, but not limited to, International Trademark No. 794860, registered on December 13, 2002, and European Union Trade Mark No. 002966505, registered on January 21, 2005, both in International Class 25 for clothing and footwear (the "PHILIPP PLEIN Mark").
The Complainant operates a website at "www.philipp-plein.com" in which goods bearing the PHILLIP PLEIN Mark are offered for sale worldwide.
The Disputed Domain Name <philipppleinde.com> was registered by the Respondent on November 24, 2016; the Disputed Domain Name <philippleinfr.com> was registered by the Respondent on November 14, 2016; and the Disputed Domain Name <philippleinpascher.net> was registered by the Respondent on January 7, 2017. The Disputed Domain Names were registered long after the Complainant began to use the PHILIPP PLEIN Mark and after the PHILIPP PLEIN Mark was first registered.
The Disputed Domain Name <philipppleinde.com> resolves to a website in German that displays and seemingly sells PHILIPP PLEIN goods; the Disputed Domain Name <philipppleinfr.com> resolves to a website in French that displays and seemingly sells PHILIPP PLEIN goods; and the Disputed Domain Name <philipppleinpascher.net> resolves to a website in French that displays and seemingly sells PHILIPP PLEIN goods. According to the Complainant, all of the goods on the respective websites are counterfeit.
The following are the Complainant's contentions:
- The Disputed Domain Names are confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
- The Disputed Domain Names were registered and are being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the PHILLIP PLEIN Mark based on its longstanding use as well as its trademark registrations for the PHILIPP PLEIN Mark. The Disputed Domain Name <philipppleinde.com> consists of the PHILIPP PLEIN Mark in its entirety along with the geographic country code "de", followed by the generic Top-Level Domain ("gTLD") ".com". The Disputed Domain Name <philipppleinfr.com> consists of the PHILIPP PLEIN Mark in its entirety along with the geographic country code "fr", followed by the gTLD ".com". The Disputed Domain Name <philipppleinpascher.net> consists of the PHILIPP PLEIN Mark in its entirety followed by the descriptive words "pas" and "cher", which mean "not expensive" in French, followed by the gTLD ".net".
The Panel concludes that the Disputed Domain Names are confusingly similar to the PHILIPP PLEIN Mark.
First, the addition of the geographic country code "de" or "fr" does not diminish the confusing similarity between the Disputed Domain Names and the Complainant's PHILIPP PLEIN Mark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark);
Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 ("the addition of the term 'korea' in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant's trademark").
Second, it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic words or terms such as "pas cher". See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as ".com" or ".net" in a domain name may be technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its PHILIPP PLEIN Mark. The name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Complainant does not have any type of business relationship with the Respondent. Based on the use of the Disputed Domain Names (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant.
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's PHILIPP PLEIN Mark. The Panel finds that the Respondent registered the Disputed Domain Names to attract customers to its websites by using domain names that are confusingly similar to the Complainant's PHILIPP PLEIN Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant's website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website for commercial gain constitutes registration and use in bad faith. Thus, the Respondent's attempt to use the significant goodwill in the PHILIPP PLEIN Mark by registering the Disputed Domain Names and using those Disputed Domain Names to misdirect visitors to websites which appear to be the Complainant's official sites advertising and seemingly selling products, particularly counterfeit ones, demonstrates the Respondent's bad faith registration and use of the Disputed Domain Names under the Policy, paragraph 4(b)(iv).
Second, the Respondent prevented the Complainant from making a legitimate use of the Disputed Domain Names, a circumstance identified under the Policy as evidence of bad faith registration and use.
Finally, the Panel finds that the Respondent had actual knowledge of the Complainant's rights in its widely-used PHILIPP PLEIN Mark when registering the Disputed Domain Names. The Respondent's actual knowledge of the Complainant's rights can be inferred from the Respondent's use of the PHILIPP PLEIN Mark to create websites in German and French that displayed and seemingly sold counterfeit PHILIPP PLEIN goods to convince customers to believe that the websites were affiliated with the genuine PHILIPP PLEIN brand.
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, <philipppleinde.com>, <philipppleinfr.com> and <philipppleinpascher.net>, be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: May 5, 2017