WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. wanshan liu, liu wanshan
Case No. D2016-0516
1. The Parties
The Complainant is Philipp Plein of Amriswil, Germany, represented by LermerRaible IP Law Firm, Germany.
The Respondent is wanshan liu, liu wanshan of Fuzhou, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <bestppshop.com> (the “Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 18, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 21, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 April 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on May 6, 2016. 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 Claimant is a fashion brand that trades under the name “Phillip Plein”. It owns the following trade mark registrations in relation to inter alia, clothing:
1) Community trade mark, Trade mark No. 002966505: Philipp Plein (word mark), registered on January 21, 2005;
2) Community trade mark, Trade mark No. 009869777: “Figurative Mark” (“PP” and device) (individually or collectively, “Figurative Mark(s)”), registered on March 3, 2013;
3) International registration Trade mark No. 794860: PHILIPP PLEIN (word mark), registered on December 13, 2002;
4) International registration Trade mark No. 1098038: (“PP” and device) (individually or collectively, “Figurative Mark(s)”), registered on October 5, 2011.
The Complainant operates the website “www.plein.com”. The trade mark registrations pre-date the registration of the Domain Name on December 16, 2015. The website connected to the Domain Name (“Website”) offered for sale counterfeit Philipp Plein clothing. The Website bears the Philipp Plein and the Figurative Mark. The Website does not appear to be active at the time of the writing of this decision.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the trade mark “PP”; the Respondent has no rights or legitimate interests with respect to the Domain Name; and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English. The Complainant contends that it tried to contact the Respondent without success. It then requested a patent attorney based in China to check the WhoIs contact details of the Respondent who reported that the details are false. For the Complainant to have to submit the Complaint in Chinese in these circumstances would not be fair as it places an undue burden on the Complainant and also cause undue delay.
The Panel accepts that in the circumstances the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent has concealed its identity so that it cannot be contacted easily. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary or descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The Domain Name is made up of two descriptive words “best” and “shop” and sandwiched in between them the letters “PP”. In this case, the Panel does not consider the words “best” and “shop” to have any distinguishing value. The generic Top-Level Domain (“gTLD”) suffix in the Domain Name, “.com” can also be disregarded. As such in considering confusing similarity under the first element, the comparison is between the letters “PP” and the trade marks which the Complainant has rights to.
The trade mark registrations that the Complainant is relying on are PHILIPP PLEIN and the Figurative Mark which consists of two “p”s, one of which is inverted, within a hexagon. The Panel does not consider the Figurative Mark to provide the Complainant with registered trade mark rights to “PP” on its own. The Panel notes that the Complainant has no trade mark registrations for “PP” on its own without stylization. The Complainant submits that because of the fame of the Figurative Marks, in the fashion market and clothes in general “PP” has become well known as a description for Philipp Plein goods. The Panel takes this to mean that the Complainant is claiming that it has unregistered rights to the unadorned letters “PP”.
In the Wikipedia page of Philipp Plein submitted in evidence, the Panel notes that the Complainant was founded in 1998. It expanded into the fashion business in 2004. Aside from one appearance of the logo, there is no particular reference in the Wikipedia entry of the Complainant or its products being referred to as “PP”. Nor has the Complainant submitted any sales and advertising figures or any marketing, promotional or editorial materials which show that the Complainant’s products are known by the short name “PP”. The Complainant’s websites at “www.plein.com” and “www.philipp-plein.com” bear the marks “Philipp Plein” and the Figurative Mark prominently but there is limited reference to “PP” simpliciter.
Taking each of the trade marks in turn − with respect to the trade mark registrations for PHILIPP PLEIN, the Panel does not consider them to be identical or confusingly similar to “PP”. With respect to the Figurative Mark, the Panel does not consider it to be identical to “PP”. The next question is whether it is confusingly similar to “PP”.
The consensus view under paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this about figurative and stylized trade marks:
“….Also, as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant’s relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name’s identity or confusing similarity with it.
In this case, the distinctive element in the Figurative Mark is a combination of the hexagon device and the letters “qp” (i.e., “pp” with the first “p” reversed). The textual elements of the Figurative Mark comprising two letters of the alphabet are not distinctive on their own and without a corresponding trade mark registration of such letters by themselves (i.e., not as part of a logo) are only protectable through acquired distinctiveness. Hence any comparison that has to be made cannot be done using just the textual element of the marks. That being the case, the Figurative Mark cannot be considered to be confusingly similar to the letters “PP”.
The next question to consider is the Complainant’s unregistered rights in the letters “PP”.
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
Unfortunately, the Complainant has not submitted any evidence to support its claim that “PP” is a well-known and distinctive identifier of Philipp Plein goods. It has made a conclusory allegation that it has rights to “PP” without any evidence substantiating the same. The Wikipedia page does not provide any of the types of evidence outlined above. It may well be that the Complainant does have unregistered rights to “PP”. However the relevant evidence has not to be put forward here and therefore the Panel has to conclude here that the Complainant has failed to establish unregistered rights to the letters “PP” for the purpose of this particular Policy proceeding. It is therefore unnecessary to consider whether there is any confusing similarity.
There are “close call” cases in which panels have, in assessing confusing similarity under the first element of the UDRP, taken into account the content of the website connected to the disputed domain names to ascertain the intent to create confusion. As stated in Schering-Plough v. Dan Myers, WIPO Case No. D2008-1641: “the content of a website may provide indication as to a respondent’s targeting of a specific trademark through the domain name chosen. Accordingly, the context in which the domain names are being used may be helpful to assess confusing similarity”.
In relation to the possible unregistered rights that the Respondent may have in relation to “PP”, the question of considering the content of the website in order to determine confusingly similarity is moot because the Complainant failed to establish unregistered rights to the trade mark “PP” for purposes of this Policy proceeding.
The Panel considered issuing a procedural order to the Complainant to provide evidence of “PP” being distinctive of the Complainant’s goods and services. However, like the panels in cases like Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama LLC, WIPO Case No. D2011-1451 and Blandy & Blandy LLP v. Mr. Daniel Beach WIPO Case No. D2012-0972 where they determined that giving the complainants a second chance to submit evidence “would not be in line with the spirit of expediency and efficiency suggested in the Policy”, the Panel also took the view that these same reasons apply in this case. As in the Blandy case, where the complainant itself was a firm of solicitors, the Complainant is represented by lawyers and therefore it is important that they present the complaint properly presenting each of the elements contained in paragraph 4(a) of the Policy without the opportunity of having “a second bite of the cherry”.
As such the Panel has to make a finding that the Domain Name is not identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant has failed to prove the first element of the UDRP. There is therefore no need for the Panel to consider the other elements.
For the foregoing reasons, the Complaint is denied.
Date: May 19, 2016