WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Fonarevich Ivan Fonarevich (Фонаревич Иван Фонаревич)
Case No. D2017-1313
1. The Parties
The Complainant is Philipp Plein of Lugano, Switzerland, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Fonarevich Ivan Fonarevich (Фонаревич Иван Фонаревич) of Vinnitsa, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <p-plein.com> (the “Domain Name”) is registered with Hosting Ukraine LLC (the “Registrar”).
3. Procedural History
The Complaint in Russian was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 10 and July 11, 2017, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the 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 11, 2017 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 amended Complaint on July 14, 2017.
On July 11, 2017, the Center sent an email communication to the Parties in English and Russian regarding the language of the proceeding. On July 13, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Russian of the Complaint, and the proceedings commenced on July 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2017.
The Center appointed Olga Zalomiy as the sole panelist in this matter on August 16, 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.
4. Factual Background
The Complainant is a German fashion designer, who owns several trademarks for his name and its permutations, such as:
-PLEIN, European Union trademark (“EU”) Registration No. 010744837, registered on August 1, 2012;
- PHILIPP PLEIN, International Registration No. 794860, registered on December 13, 2002;
- PHILIPP PLEIN, EU trademark Registration No. 002966505, registered on January 21, 2005.
The Respondent registered the Domain Name on May 2, 2017. Prior to the Complaint the Domain Name resolved to a website offering for sale goods bearing the Complainant’s trademarks for a fraction of the Complainant’s prices. At the time of the Notification of the Complaint, the Domain Name resolved to an inactive website.
5. Parties’ Contentions
A. Complainant
The Complainant claims that it registered its PLEIN and PHILIPP PLEIN trademark in many countries. The Complainant alleges that the Domain Name is identical or confusingly similar to its PLEIN trademark because it incorporates the Complainant’s PLEIN trademark in its entirety. The Complainant argues that the addition of the initial letter “p” in the Domain Name increases the likelihood of confusion for consumers because the letter “p” is the initial letter of the other Complainant’s trademarks and could be easily associated with the Complainant’s design trademark. The Complainant contends that the Top-Level Domain (“TLD”) suffix in the Domain Name is generally disregarded under the confusing similarity test as a technical requirement of registration.
The Complainant claims that the Respondent has no rights or legitimate interest in the Domain Name because the Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant and the Complainant has not authorized the Respondent to include its well-known trademark in the Domain Name. The Complainant alleges that it is not aware of any evidence that demonstrate that the Respondent is commonly known by the Domain Name as individual, business or other organization; or owns any PLEIN or P PLEIN trademarks. The Complainant contends that the Domain Name resolves to a webpage, which displays its design PHILIPP PLEIN trademark and which offers for sale purported PHILIPP PLEIN goods. The Complainant argues that the Respondent is using the Domain Name to represent its website as an official ecommerce platform of the Complainant offering for sale allegedly PHILIPP PLEIN goods for sale. The Complainant claims that such use of the Domain Name does not amount to a legitimate noncommercial or fair use of the Domain Name.
The Complainant alleges that the Respondent registered the Domain Name and is using the Domain Name in bad faith. The Complainant contends that the Respondent registered the Domain Name in bad faith because the Respondent included the Complainant’s well-known trademark into the Domain Name for use in connection with a website, which displays the Complainants design trademark as well as name of the Complainant’s official garments. The Complainant argues that the Domain Name registration long after registration of the Complainant’s trademarks also shows that the Domain Name was registered in bad faith. The Complainant alleges that the Respondent is using the Domain Name in bad faith because the Domain Name directs to a website offering for sale purported PHILIPP PLEIN goods without authorization. The Complainant contends that the Respondent’s website displays the Complainant’s design and word trademarks used in connection with purported PHILIPP PLEIN goods. The Complainant alleges that the website also uses names of the genuine Complainant’s handbags, which does not amount to good faith use. The Complainant argues that such use of the Domain Name by the Respondent causes substantial damages to the Complainant’s image and reputation for two reasons: 1) because the Respondent is selling purported Philipp Plein goods via website, which is very similar to the official Complainant’s website; and 2) because users risk their confidential credit card information being stolen or misused when they purchase goods from the Respondent’s website. The Complainant contends that the Domain Name was registered and is being used to intentionally attract for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s official website by creating an impression that the Respondent’s website is sponsored by or affiliated with the Complainant. The Complainant alleges that combined with the other facts, the Registrant’s use of a privacy service at the time of the Domain Name registration indicates bad faith registration and use.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the proceeding
Paragraph 11(a) of the Rules provides that: “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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English because forcing the Complainant to translate the documents in this proceeding into Russian, the language, which the Complainant does not know, will put undue financial burden on the Complainant and will result in undue delay. The Complainant also points out that the Domain Name comprises only Latin characters, which strongly suggests that the Respondent has knowledge of languages other than Russian.
The Panel accepts the Complainant’s arguments. Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include the language/script of the domain name particularly where the same as that of the complainant’s mark, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint...”1
Some of such scenarios are present in this case. Here, the Respondent registered the Domain Name in the Latin characters rather than in Cyrillic even though the Respondent’s website is in Russian. In addition, the Respondent uses the Domain Name to direct to a website in Russian offering for sale purported PHILIPP PLEIN handbags and uses names of the actual PHILIPP PLEIN handbag styles in English in connection with bags of other styles. Also, the Center notified the parties in both Russian and English of the potential language issue, inviting the Complainant to either translate the Complaint or to submit a supported request that the Complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant. In response, the Complainant submitted the amended Complaint with a request that the present proceedings be conducted in English and the Respondent did not object to the Complainant’s request. The Panel finds that in the circumstances it will not be unfair to the Respondent if the proceeding is conducted in English. Instead, forcing the Complainant to translate the Complaint and supporting documents into Russian will impose undue financial burden on the Complainant and delay resolution of the dispute.
Based on the circumstances of the case, and considering that the Respondent was given the opportunity to comment on the language of Proceeding which it did not do, the Panel grants the Complainant’s request that English be the language of this proceeding.
6.2. General discussion
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has established its rights in the PLEIN trademark by submitting copies of the European Union trademark registration for the PLEIN word mark. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”
It is well established that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”2 “Where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”3 “The applicable Top Level Domain (‘TLD’) in a domain name […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”4 “The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD...”5
Here, the Domain Name consists of the letter “p”, a hyphen, the Complainant’s PLEIN trademark and the TLD suffix “.com”. The Domain Name incorporates the Complainant’s trademark in its entirety. The addition of the letter “p”, the hyphen or the TLD “.com” does not impact the assessment of the confusing similarity.
Thus, the Domain Name is identical or confusingly similar to the Complainant’s PLEIN mark and the first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.6 Once the Complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.7 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.8
The Complainant contends that the Respondent is not commonly known by the Domain Name and that the Respondent does not own any PLEIN or PHILIPP PLEIN trademark registrations. There is no evidence on file that contradicts the Complainant’s contention.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use and register the Complainant’s PLEIN trademark, or to register any domain names incorporating the PLEIN mark. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use that complainant’s trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com, Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
The evidence also shows that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, nor is the Respondent using the Domain Name in connection with a bona fide offering of goods or services as a reseller. The Domain Name resolves to a website offering for sale purported PHILIPP PLEIN handbags for a fraction of the Complainant’s prices. The Respondent also uses names of the actual PHILIPP PLEIN handbag styles on its website to refer to different styles of bags. It is, therefore, unlikely, that the Respondent resells genuine PHILIPP PLEIN handbags. There is no evidence that the Respondent’s website accurately and prominently discloses lack of any relationship between the Respondent and the Complainant. The Panel, therefore, finds that the Respondent selected and used the Domain Name solely in order to attract Internet users to its website by trading on the goodwill of the Complainant’s trademark.
The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios may constitute evidence of a respondent’s 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 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 the respondent’s website or location.
The Respondent registered the Domain Name many years after the Complainant registered its PLEIN trademarks. It is inconceivable that the Respondent did not know about the Complainants trademarks at the time of the Domain Name registration because the Respondent uses the Domain Name to direct to a website offering purported PHILIPP PLEIN handbags for sale. The Respondent’s website uses official style names of the Complainant’s goods in connection with goods of different style. Therefore, the Domain Name was registered in bad faith.
The Respondent is also using the Domain Name in bad faith because by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the its website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of either the Respondent or its website. The evidence on file shows that the Domain Name resolves to a website designed to look like it is associated with or authorized by the Complainant. The website displays the Complainant’s PHILIPP PLEIN design trademark and offers for sale purported PHILIPP PLEIN handbags yet for a fraction of the price for the genuine Complainant’s goods. Such use is not in good faith.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved.
7. Decision
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, <p-plein.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: August 28, 2017
1 Section 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 Section 1.7, WIPO Overview 3.0.
3 Id.
4 Section 1.11.1, WIPO Overview 3.0.
5 Section 1.11.2, WIPO Overview 3.0.
6 Section 2.1, WIPO Overview 3.0.
7 Id.
8 Id.