WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Norma Brandon, cheapphilippplein
Case No. D2015-1050
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, Queensland, Australia / Norma Brandon, cheapphilippplein of Fuzhou, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <cheapphilippplein.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 June 18, 2015. On June 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 July 6, 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 July 9, 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 July 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2015.
The Center appointed Angela Fox as the sole panelist in this matter on August 6, 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 fashion designer who designs and sells apparel for men and women under his name, Philipp Plein.
The Complainant owns trademark registrations for PHILIPP PLEIN in respect of inter alia clothing and footwear, as well as related goods and accessories. Annexed to the Complaint were details of the following:
- International Trademark registration no. 794860 for PHILIPP PLEIN, registered on December 13, 2002 in Classes 3, 14, 18, 20, 21, 24, 25 and 28; and
- Community Trade Mark registration no. 2966505 for PHILIPP PLEIN, filed on December 6, 2002 and registered on January 21, 2005 in Classes 3, 14, 18, 20, 21, 24, 25 and 28.
The Complainant notes that the IC Marks are registered inter alia in China, where the Respondent is based. The Complainant submits that its Philipp Plein-branded clothing is sold by his company worldwide with great success. The Philipp Plein ranges can be seen on the Complainant’s website at “www.philipp-plein.com”.
The disputed domain name was registered on October 14, 2013. According to the Complainant, the disputed domain name has been used in respect of a website offering counterfeit Philipp Plein clothing for sale. Annexed to the Complaint was a print-out from the website linked to the disputed domain name made on June 18, 2015 showing what appear to be counterfeit Philipp Plein-branded hoodies, t-shirts, vests and other items of clothing, together with a side bar referring to “Replica wholesale philipp plein clothing sale”.
As of the date of this decision, the website linked to the disputed domain name is no longer accessible.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to his name and trademark PHILIPP PLEIN. The element “philippplein” is essentially identical to the Complainant’s trademark PHILIPP PLEIN, omitting only the space between the words, which is immaterial since such spaces cannot be replicated in domain names. The additional word “cheap” is purely descriptive of price and does not distinguish the domain name from the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Complainant and the Respondent. Moreover, the Complainant submits that the Respondent has been using the disputed domain name to offer counterfeit copies of Philipp Plein-branded clothing, which implies that the Respondent has no rights or legitimate interests in the disputed domain name.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith to market counterfeit copies of its branded goods. The Complainant submits that the Respondent registered and has used the disputed domain name with the aim of disrupting the business of the Complainant’s company and to mislead consumers so as to gain commercially from the sale of counterfeit goods to consumers who were attracted to the website in the erroneous belief that they would be able to buy genuine Philipp Plein-branded clothing there.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has shown that it owns registered trademark rights in PHILIPP PLEIN. The disputed domain name incorporates the Complainant’s trademark in its entirety and differs only in the addition of the non-distinctive English word “cheap”.
The presence of non-distinctive matter in a disputed domain name does not normally avoid confusing similarity between a domain name and a complainant’s trademark, and indeed it often heightens the risk (see, inter alia, Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589, where the panel held, “it is an established principle that the mere addition of generic terms and/or numbers does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark.”)
The word “cheap” is non-distinctive and does nothing to distinguish the disputed domain name from PHILIPP PLEIN, which is in fact the only distinctive element within the disputed domain name. Taken together, all the elements in the disputed domain name combine to suggest a website where the Complainant’s Philipp Plein-branded clothing can be bought cheaply.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
There is no relationship between the Complainant and the Respondent, and it is therefore clear that the Complainant has never authorized, licensed or permitted the Respondent to use the PHILIPP PLEIN trademark. The Respondent does not appear to have been commonly known by a name corresponding to the disputed domain name.
The Respondent has made no effort to refute the allegation that it has no rights or legitimate interests in the disputed domain name.
There is nothing on the facts of this case to suggest that the Respondent could invoke any of the circumstances listed in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name.
Although the Respondent appears to have used the disputed domain name to offer counterfeit versions of the Complainant’s branded clothing for sale, such use does not appear to be use in connection with a bona fide offering of goods in accordance with paragraph 4(c)(i) of the Policy. The Complainant states, and the Respondent does not deny, that the goods offered through the Respondent’s website were not in fact genuine goods, but were rather counterfeits. The annexed print-out from the website linked to the disputed domain name supports this contention, since it refers to “Replica wholesale philipp plein clothing sale”, which would indicate that the goods offered on the Respondent’s website were unauthorized copies. The Respondent’s use of a domain name that is confusingly similar to the Complainant’s trademarks in order to attract Internet users looking for genuine products of the Complainant’s company and to offer them unauthorized copies instead is a “bait and switch” strategy that lacks bona fides and does not give rise to rights or a legitimate interests under the Policy.
As noted by the panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, trading upon the name, goodwill and reputation of another by misleadingly attracting Internet users for commercial gain cannot be considered to constitute a bona fide commercial or fair use within the meaning of paragraph 4(c)(i) of the Policy. In that case the panel held that:
“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services […] to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”
Numerous panels have found under the UDRP that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name” (see, for instance, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).
The Panel finds that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant refers in the Complaint to its worldwide sales of Philipp Plein-branded clothing and to its website at “www.philipp-plein.com”, which promotes the sale of those goods.
The content of the website linked to the disputed domain name at the time the Complaint was filed indicates that the Respondent was aware of the Complainant’s activities under the name and trademark PHILIPP PLEIN in the fashion clothing field at the time the disputed domain name was registered. The disputed domain name appears to have deliberately been chosen with the intention of attracting Internet users by creating a likelihood of confusion with the Complainant’s PHILIPP PLEIN trademark, with the intent to gain commercially through the sale of unauthorized imitations.
By its conduct, the Respondent is essentially free-riding on the goodwill of the Complainant’s trademark and disrupting the Complainant’s business by diverting and misleading consumers looking for genuine products of the Complainant’s company and instead offering them unauthorised copies. Such activities are inherently damaging to the Complainant’s rights and legitimate business interests.
These circumstances leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith under 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 name <cheapphilippplein.com> be transferred to the Complainant.
Date: August 20, 2015