The Complainant is Philipp Plein of Lugano, Switzerland, represented by Barzano & Zanardo Roma S.p.A, Italy.
The Respondent is KIMINHA of Seoul, Republic of Korea.
The disputed domain name <78plein.com> is registered with Gabia, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 21, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that the language of the Registration Agreement is Korean, that the Respondent is listed as the registrant, and providing the Respondent's contact details.
On July 26, 2017, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On July 27, 2017, the Complainant requested for English to be the language of the proceeding.
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 August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. The Center received five informal email communications from the Respondent on the following dates: August 4, 2017 (two email communications); August 8, 2017; August 10, 2017; and August 16, 2017.
The Center appointed Andrew J. Park as the sole panelist in this matter on September 4, 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 German fashion designer Philipp Plein, the founder of the eponymous brand. Currently, the Complainant is universally recognized as a leading brand in the luxury fashion industry.
Due to its longstanding use, and substantial promotional and advertising investments, the PHILIPP PLEIN trademark is well-known.
The Complainant is the owner of the following Philipp Plein and related marks :
- PLEIN. European Union Trade Mark ("EUTM") registration no. 010744837; registered on August 1, 2012, for goods in classes: 3, 14, 18, 20, 21, 24, 25, and 28;
- PHILIPP PLEIN. International registration no. 794860, designating, among others, the Republic of Korea; registered on December 13, 2002, for goods in classes: 3, 14, 18, 20, 21, 24, 25, and 28;
- PP Logo. International registration no. 1098038, designating, among others, the Republic of Korea; registered on October 5, 2011, for goods in classes: 3, 14, 18, 20, 21, 24, 25, and 28;
- PP 78 Logo. International registration no. 1312432, designating, among others, the Republic of Korea; registered on August 19, 2015, for goods in classes: 3, 9, 14, 18, 20, 21, 24, 25, 28, and 35;
- PP PHILIPP PLEIN Logo. EUTM registration no. 012259503; registered on March 24, 2014, for goods in classes 3, 14, 18, 20, 21, 24, 25, and 28;
The Respondent responded in five informal emails.
The disputed domain name <78plein.com> was registered by the Respondent on February 22, 2017, and redirects to a website offering for sale alleged Philipp Plein branded goods, competing goods, and displaying the Complainant's trademarks and its copyrighted pictures.
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name <78plein.com> is confusingly similar to the Complainant's trademarks, and in particular to the trademarks PHILIPP PLEIN and PLEIN. The disputed domain name consists of the term "plein"(which is the Complainant's family name) preceded by the number "78", which refers to the year of birth of Mr. Philipp Plein. The number "78" is also a recurring number in the Complainant's activities, goods, promotional campaigns, and trademarks. The term "plein" should be considered the dominant and distinctive portion of the trademark PHILIPP PLEIN, and the addition of the number "78," rather than diminishing the confusing similarity, increases it since it refers to the year of the Complainant's birth and one of the characteristic and distinctive features of his collections, promotional campaigns, and trademarks.
2) the Complainant denies that the Respondent is its authorized dealer, agent, distributor, wholesaler or retailer. The Complainant has never authorized a person, company, or other entity called KIMINHA to include its well-known trademarks in the disputed domain name, nor to make any other use of its trademarks in any manner whatsoever. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent shows no evidence that it has made use of or intends to make use of the disputed domain name in connection with a bona fide offering of goods or services. Further, the Respondent is using the disputed domain name to offer for sale clothing, footwear and other items, including those of the Complainant's competitors.
3) the disputed domain name was registered and is being used in bad faith. The Complainant's trademark, PHILIPP PLEIN, was registered in 2002, which is much prior to the Respondent becoming the owner of the disputed domain name in 2017. The Complainant has a great level of notoriety in the market through the use of the trademark PHILIPP PLEIN, and it is obvious that the Respondent registered the disputed domain name despite being aware of the Complainant's exclusive rights to the PHILIPP PLEIN mark and its global reputation. The Complainant also insists that the Respondent is taking unfair advantage from the reputation of the Complainant's trademarks to intentionally attract and to lead potential Internet consumers to its website offering for sale alleged PHILIPP PLEIN goods or goods from the Complainant's competitors for commercial gain.
The Respondent sent several informal emails in English admitting that the Respondent has been using the disputed domain name <78plein.com>. The Respondent stated that the website associated with the disputed domain name is merely a personal blog and he/she is merely introducing the Complainant's product to his/her friends because he/she likes the Complainant's products. The Respondent also mentions that he/she will stop using the disputed domain name and will follow any procedures that are necessary to resolve this matter.
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.
The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The disputed domain name resolves to a website which is in English;
3) Another domain name which is associated with the Respondent resolves to a website that is also in English, which shows that the Respondent understands English; and
4) The Respondent submitted several emails – all written in English – to the Center in connection with this case.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English.
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the marks PLEIN, PHILIPP PLEIN and a PP 78 Logo mark and that the disputed domain name is confusingly similar to the Complainant's trademark PLEIN and PHILIPP PLEIN. The disputed domain name incorporates the Complainant's trademark in its entirety, and adding the number "78" does nothing to avoid a finding of confusing similarity to the Complainant's trademark; rather it increases the similarity because the Complainant also has a trademark which includes the number "78" in it.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed 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, Third Edition ("WIPO Overview 3.0"), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel's view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name "Philipp Plein".
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the 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 the respondent's website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent registered the disputed domain name to take unfair advantage from the reputation of the Complainant's trademarks and goods to lead Internet users to its website offering for sale alleged PHILIPP PLEIN goods and goods from the Complainant's competitors to gain profit.
Even though the Respondent responded in several emails, it did not rebut the Complainant's allegations of the Respondent's bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
The Panel finds that the Complainant's registered trademark PHILIPP PLEIN is well known, that it has been used for almost 15 years and that it was registered before the Respondent registered the disputed domain name. The disputed domain name is confusingly similar to the Complainant's trademark and the website at the disputed domain name displays the Complainant's well-known trademarks and offers the Complainant's and competing products for sale. It is clear that the Internet users will be attracted to the disputed domain name, and as more Internet users click the Respondents website, the Respondent will gain financial profits.
Accordingly, the evidence shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's trademark in violation of paragraph 4(b)(iv) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <78plein.com> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: September 20, 2017