WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Sandy Oakes
Case No. D2016-0719
1. The Parties
The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Sandy Oakes of Santa Monica, California, United States of America.
2. The Domain name and Registrar
The disputed domain name <philipplein.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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.
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 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 19, 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 Complainant is the owner, amongst others, of the following trademark registrations covering a range of fashion-related offerings:
- International Trademark registration No. 794860 for PHILIPP PLEIN filed on December 13, 2002, registered on the same date and successively renewed to cover goods in classes 03, 14, 18, 20, 21, 24, 25 and 28;
- European Union Trademark registration No. 2966505 for PHILIPP PLEIN registered on January 21, 2005, to cover goods in classes 03, 14, 18, 20, 21, 24, 25 and 28.
The disputed domain name <philipplein.com> was registered on April 18, 2011. The disputed domain name resolves to a parked page with pay-per-click ("PPC") links.
5. Parties' Contentions
The Complainant asserts that it sells goods, especially clothes, worldwide under the name and trademark PHILIPP PLEIN and through its website "www.philipp-plein.com".
The Complainant further asserts that the disputed domain name <philipplein.com> is substantially identical and confusingly similar to its PHILIPP PLEIN trademark because it merely suppresses one of the three "P" letters of PHILIPP PLEIN when joining the two words.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent does not own trademark rights over the disputed domain name;
(ii) the Respondent has no relationship with the Complainant and has not received no authorization to register the Complainant's trademark in the disputed domain name and,
(iii) the Respondent is using the disputed domain name to redirect Internet users to third-party websites, some of which appear to sell fake products;
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent is intentionally misleading and attempting to redirect Internet users to its advantage and with the purposes of disrupting the Complainant's business by linking Internet users to webpages selling counterfeit goods.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established its rights in its PHILIPP PLEIN trademark, duly registered internationally and in the European Union.
The Complainant's trademark is partially reproduced in the disputed domain name with the mere suppression of one of the three "P" letters of PHILIPP PLEIN when joining the two words, which in the Panel's view does not distinguish the disputed domain name from the Complainant's trademark.
Quite on the contrary: such a suppression characterizes typosquatting aimed at Internet users that forget to type the third "P" in between PHILIPP and PLEIN.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not authorized the Respondent to use the PHILIPP PLEIN trademark in the disputed domain name, nor is there any sort of relationship between the Complainant and the Respondent.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, corroborate with the indication of the absence of a right or legitimate interest.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with a parked website that displays links or pay-per-click advertisements related to the Complainant's business characterizes the Respondent's intent of commercial gain by misleadingly diverting the Complainant's consumers or merely earning revenues from the links that solely exist in view of the association with the Complainant's trademark.
Such use, in this Panel's view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant's trademark, thus unfairly capitalizing on the PHILIPP PLEIN trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to 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 <philipplein.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: June 3, 2016