WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Li Ning
Case No. D2016-2617
1. The Parties
The Complainant is Philipp Plein of Lugano, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Li Ning of China.
2. The Domain Names and Registrar
The disputed domain names <philipppleinpascher.com> and <shopphilipppleinclearance.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2016. On December 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 January 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2017.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 31, 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 the German fashion designer Philipp Plein.
The Complainant owns several PHILIPP PLEIN trademark applications and registrations in multiple countries, as also in the European Union, which were filed as early as 2002 (registration number 002966505 registered on January 21, 2005).
The trademark PHILIPP PLEIN is used to designate fashion clothing and footwear.
The Respondent registered the disputed domain names <philipppleinpascher.com> and <shopphilipppleinclearance.com> respectively on August 31, 2016 and October 14, 2016.
The Panel accessed the disputed domain names on February 9, 2017, when they were both linked to websites containing reproductions of the Complainant's trademark PHILIPP PLEIN, offering clothing and footwear products for sale.
5. Parties' Contentions
The Complainant makes the following contentions:
- The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is inter alia owner of several PHILIPP PLEIN trademarks, including the International trademark no. 794860 and the European Union Trade Mark no. 002966505 seeking protection for goods in class 25 (clothing, footwear). Furthermore, the Complainant's name is also "Phillipp Plein". The disputed domain names were registered by the Respondent and were and are still used to sell counterfeit PHILIPP PLEIN products. The trademark and the disputed domain names contain identical words. The goods offered by the Respondent under the disputed domain names are confusingly similar to the goods protected by the trademarks of the Complainant and sold by his company worldwide with great success. The words "shop", "clearance" and "pascher" are nondistinctive and do nothing to distinguish the disputed domain names from the trademark PHILIPP PLEIN, which is in fact the only distinctive element within the disputed domain names.
- The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has neither rights nor a legitimate interest in respect of the disputed domain names. The Respondent does not own any registered trademark. Moreover, there is no relationship between the Complainant and the Respondent. The disputed domain names are used to sell counterfeit goods. According to the WhoIs database the disputed domains were registered on August 31, 2016 and October 14, 2016, long after the Complainant's trademarks were registered.
- The disputed domain names were registered and are being used in bad faith. As there is no relationship between the Complainant and the Respondent, the Respondent uses the disputed domain with the purpose of selling counterfeit goods. The registration of the disputed domain names was primarily for the purpose of disrupting the business of the Complainant. By using the disputed domain names and copying parts of the Complainant's homepage, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's trademarks and the Complainant's goods. Furthermore, the additive "shop" and "clearance" give the impression, that the website "www.shopphilipppleinclearance.com" is an official online shop for sales of Philipp Plein products, which is not the case.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that "philipp plein" is a term directly connected with the Complainant's activities in the fashion business.
Annex 4 and 5 to the Complaint show international registrations of PHILIPP PLEIN trademarks obtained by the Complainant since at least 2002.
The trademark PHILIPP PLEIN is wholly encompassed within the disputed domain names.
The disputed domain names differ from the Complainant's trademark basically by the addition of the expressions "pascher" on the disputed domain name <philipppleinpascher.com>, and "shop" and "clearance" on the disputed domain name <shopphilipppleinclearance.com>, as well as of the generic Top-Level Domain ("gTLD") denominator ".com".
Previous UDRP decisions have demonstrated that descriptive additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD extension such as ".com" is irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.
As a result, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain names.
The present record provides no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Furthermore, the Respondent is currently using the Complainant's trademark PHILIPP PLEIN on the websites published at the disputed domain names in order to offer clothing and footwear for sale, without any authorization.
Consequently, and also in light of the Panel's findings below, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in 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 registration 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 its website or location or of a product or service on its website or location.
When the disputed domain names were registered by the Respondent (in 2016), the trademark PHILIPP PLEIN was already directly connected to the Complainant's activities in the fashion business.
The disputed domain names encompass the trademark PHILIPP PLEIN, together with descriptive expressions related with the Complainant's business ("pascher", "shop" and "clearance"). Also, it is currently linked to websites that contain a reproduction of the Complainant's trademark, offering clothing and footwear products for sale.
Therefore, the Panel concludes that it would definitely not be feasible to consider that the Respondent could not have been aware of the Complainant's trademark, as well as that the adoption of the expressions "philipppleinpascher" and "shopphilipppleinclearance" could be mere coincidences.
Actually, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainants' trademark; and
(ii) potentially obtains revenue selling counterfeit products; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith, and the Complainants have also satisfied the third element 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 names <philipppleinpascher.com> and <shopphilipppleinclearance.com> be transferred to the Complainant.
Date: February 14, 2017