WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Zhang Ming
Case No. D2017-0626
1. The Parties
The Complainant is Philipp Plein of Lugano, Switzerland, represented by Barzanò & Zanardo Roma SpA, Italy.
The Respondent is Zhang Ming of Shaoguan, China.
2. The Domain Name and Registrar
The disputed domain name <philipppleinclearancestore.com> (the "Disputed Domain Name") 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 March 28, 2017. On March 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2017, 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 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 27, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 3, 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 a German fashion designer who is the founder of the luxury fashion brand "Philipp Plein" that creates and sells various luxury fashion products. The Complainant is universally recognized as a leading brand in the luxury fashion industry, participating in important fashion shows around the world. The Complainant has 36 stores, over 500 retail clients worldwide, including in China where the Respondent resides, and operates a website at "www.philipp-plein.com" in which goods bearing the PHILLIP PLEIN trademark are offered for sale worldwide.
The Complainant is the owner of registered trademarks for PHILIPP PLEIN, including, European Union Trade Mark Registration No. 002966505, registered on January 21, 2005; Hong Kong, China national Registration No. 300960561, registered on March 18, 2008; European Union Trade Mark Registration No. 012259503, registered on March 24, 2014; and Hong Kong, China national Registration No. 303054276, registered on March 23, 2015 (the "PHILIPP PLEIN Mark").
The Disputed Domain Name was registered on January 16, 2017. The Disputed Domain Name resolves to a website advertising and offering for sale goods bearing the PHILIPP PLEIN Mark. Photos of the items displayed on the Respondent's website are those of genuine PHILLIP PLEIN goods. Customers may place orders on the website by entering their name, address and other contact information, as well as their confidential payment information.
The Complainant sent two cease and desist letters to the Respondent − on January 18, 2017 and March 27, 2017 − in an attempt to recover the Disputed Domain Name. The Respondent did not respond to those letters.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the PHILLIP PLEIN Mark based on its longstanding use as well as its multiple trademark registrations for the PHILIPP PLEIN Mark. The Disputed Domain Name <philipppleinclearancestore.com> consists of the PHILIPP PLEIN Mark in its entirety along with the descriptive words "clearance store", followed by the generic Top-Level Domain ("gTLD") ".com".
The Panel concludes that the Disputed Domain Name is confusingly similar to the PHILIPP PLEIN Mark.
First, it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of descriptive words or term such as "clearance store". See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
This is especially true where, as here, the descriptive words are associated with the Complainant and its goods or services because "clearance store" following the PHILIPP PLEIN Mark in the Disputed Domain Name infers that the items offered on the website are sold at a discount. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusing similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Finally, the addition of a gTLD such as ".com" in a domain name may be technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its PHILIPP PLEIN Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent an authorized dealer, agent, distributor, wholesaler or retailer of PHILIPP PLEIN goods. Based on the use made of the Disputed Domain Name (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's PHILIPP PLEIN Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant's PHILIPP PLEIN Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant's website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website for commercial gain demonstrates registration and use in bad faith. Thus, the Respondent's attempt to use the significant goodwill in the PHILIPP PLEIN Mark by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to a website which appears to be the Complainant's official site allegedly advertising and seemingly selling genuine PHILIPP PLEIN products, demonstrates the Respondent's bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use creates the impression that the Respondent's website is sponsored/affiliated or endorsed by the Complainant.
Second, the Respondent prevented the Complainant from making a legitimate use of the Disputed Domain Name, a circumstance identified under the Policy as evidence of bad faith registration and use.
Finally, the Panel finds that the Respondent had actual knowledge of the Complainant's rights in its widely‑used PHILIPP PLEIN Mark when registering the Disputed Domain Name. The Respondent's actual knowledge of the Complainant's rights can be inferred from the Respondent's use of the PHILIPP PLEIN Mark to create a website that displayed and sold goods to convince customers that the website was affiliated with the genuine PHILIPP PLEIN brand. In addition, the Respondent demonstrated bad faith because Internet users who wanted to place orders had to provide their personal contact and financial information, risking theft of this data by the Respondent.
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, <philipppleinclearancestore.com>, be transferred to the Complainant.
Lynda M. Braun
Date: May 11, 2017