WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Thomas Maddox
Case No. D2015-0612
1. The Parties
The Complainant is Philipp Plein of Amriswil, Switzerland ("Complainant"), represented by LermerRaible IP Law Firm, Germany.
The Respondent is Thomas Maddox of Stevensville, Ontario, Canada ("Respondent").
2. The Domain Name and Registrar
The disputed domain name <philipppleinfrance.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 5, 2015.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 8, 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
Complainant is the owner of several trademarks, the earliest of which issued on December 13, 2002 in connection with clothing and footwear. Complaint, Annex 4. Complainant markets clothing, much of which features a prominent skull and cross-bones motif, which are sold worldwide with great commercial success.
Respondent registered the disputed domain name on July 3, 2014. Complaint, Annex 1. The disputed domain name resolves to a web site at which a photograph of one of Complainant's retail outlets is prominently featured and on which Complainant contends are counterfeits of its products are offered for sale. Complaint, Annex 5.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant's PHILIPP PLEIN trademark, in that it incorporates the mark in the disputed domain name together with the word "France", a geographic descriptive term. Complainant alleges that Respondent has no trademark corresponding to the disputed domain name and that Complainant has not authorized Respondent to use the trademark in any way, and therefore that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that the disputed domain name resolves to a web site selling counterfeit goods of Complainant for the purpose of commercial gain, and therefore that the disputed domain name has been registered and is being used in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and,
(ii) that respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name includes Complainant's PHILIPP PLEIN trademark in its entirety together with the word "France" and the generic Top-Level Domain (gTLD) suffix ".com". The addition of the geographically descriptive word "France" does not alter the fact that the disputed domain name calls to mind Complainant's trademark and suggests that it is connected with Complainant. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark.
B. Rights or Legitimate Interests
The consensus view of WIPO UDRP panels concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Complainant has provided evidence that Respondent is using the disputed domain name to resolve to a web site at which a photograph of one of Complainant's retail outlets is depicted and clothes that are apparently retailed by Complainant, but which Complainant contends are counterfeit, are being offered for sale. Respondent has failed to respond to any of Complainant's allegations. Accordingly, the Panel finds that such a practice constitutes bad faith registration and use and is violation 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 name, <philipppleinfrance.com>, be transferred to Complainant.
M. Scott Donahey
Date: May 11, 2015