WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Charlo Charly/Whoisguard Protected, Whoisguard, Inc.
Case No. D2015-0668
1. The Parties
Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.
Respondent is Charlo Charly of Cancun, Mexico; Whoisguard Protected, Whoisguard, Inc. of Panama.
2. The Domain Name and Registrar
The disputed domain name <pleinphilipp.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2015. On April 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 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 April 21, 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 Respondent of the Complaint, and the proceedings commenced on April 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 15, 2015
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on May 21, 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 designs and sells clothing, footwear and other goods under his individual name PHILIPP PLEIN, which is also the name of his website located at “www.philipp-plein.com” from which Complainant’s goods can be purchased.
Complainant is the owner of several trademark registrations for the mark PHILIPP PLEIN, including International trademark No. 794860 (registered December 13, 2002) and Community Trademark No. 002966505 (registered January 21, 2005) covering various goods, including clothing and footwear.
The disputed domain name was registered on December 9, 2014, several years after Complainant’s trademarks were registered.
5. Parties’ Contentions
Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s trademark rights in his name, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) That the disputed domain name 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant owns an International Trademark Registration and Community Trademark Registration for the mark PHILIPP PLEIN, which is also his individual name. These marks were registered many years before the disputed domain name was registered.
The disputed domain name incorporates Complainant’s full name, with the two names reversed so that the last name appears first. Such reversal of names does not add any distinguishing element. Also, the mere addition of the generic Top-Level Domain (gtld) “.com” does not add any distinguishing element.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
Based on previous UDRP decisions, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a 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.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Complainant’s allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name reverts to a website displaying copies of Complainant’s logo, trademark and photos of Complainant’s clothing items apparently taken from Complainant’s authorized website. Complainant submits that the goods displayed on Respondent’s website at the disputed domain name are counterfeit goods. Respondent has provided no evidence or argument to refute Complainant’s submission. Respondent’s use of the disputed domain name is not a bona fide offering of goods or services.
Respondent has no relationship with Complainant and has no permission from Complainant to use Complainant’s mark or any domain name incorporating that mark. There is no evidence that Respondent is commonly known by the name Plein Philipp. Nothing in the WhoIs contact information for Respondent implies that it is commonly known by either name.
Accordingly, Respondent is not making a legitimate use of the disputed domain name and Respondent has failed to come forward with any evidence demonstrating rights or legitimate interests in the disputed domain name.
The Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant asserts that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. Respondent’s website offers clothing items bearing Complainant’s mark that appear to be counterfeits of Complainant’s goods. It appears that Respondent is using the disputed domain name in a deliberate attempt to confuse consumers into believing that Respondent is related to or authorized by Complainant. Alternatively, Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark.
In view of the content of Respondent’s website, including possible counterfeits of Complainant’s clothing items bearing Complainant’s mark, there can be no doubt that Respondent was aware of Complainant’s trademark at the time Respondent registered the disputed domain name in December 2014.
Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
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 <pleinphilipp.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Date: June 3, 2015