WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Nexperian Holding Limited / Bing Wang, Wang Bing
Case No. D2017-1309
1. The Parties
The Complainant is Philipp Plein of Lugano, Switzerland, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Nexperian Holding Limited of Hangzhou Zhejiang, China / Bing Wang, Wang Bing of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <philipp-plein-pp.com>, <pp-philipp-plein.com> and <pp-philippplein.com> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 10, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 14, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 20, 2017.
On July 14, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On July 18, 2017, the Center noted in the Complaint that the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 in Chinese and English of the Complaint, and the proceedings commenced on July 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on August 18, 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, the founder of the Philipp Plein brand of luxury fashion. The Complainant has participated in international fashion shows including in Milan, Paris and New York. The Complainant claims to have enjoyed phenomenal success, with over 500 retail clients worldwide including in China, and 36 mono-brand stores. Its annual turnover is over EUR 100 million. As a result of its longstanding use and extensive promotional and advertising investments including sponsorship agreements with Formula One and Italian soccer team celebrities, the PHILIPP PLEIN trade mark is well known.
The Complainant’s PHILIPP PLEIN trade mark has been registered under International Registration No. 794860, in which China was a designated country. The registration is dated December 13, 2002. The Complainant’s trade mark (“the figurative mark”) is registered under European Union Trade Mark No. 002966505 (filed on December 6, 2002, and registered on January 21, 2005).
The disputed domain names were registered on November 6, 2016. The disputed domain names resolve to Chinese websites displaying the Complainant’s PHILIPP PLEIN and figurative trade marks.1
Cease and desist letters were sent to the Respondent but the Complainant did not receive any reply from the Respondent.
5. Parties’ Contentions
i) The disputed domain names are confusingly similar to the Complainant’s PHILIPP PLEIN trade mark. The disputed domain names all contain the PHILIPP PLEIN element, combined with the double letters “pp”, which is a clear reference to the figurative mark of the Complainant. The addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar.
ii) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not an authorized agent, dealer, distributor, wholesaler or retailer of the PHILIPP PLEIN goods. The Respondent is not authorized to use the Complainant’s trade mark in its domain names or in any manner whatsoever. The Respondent is not commonly known by the disputed domain names nor does it own rights in PHILIPP PLEIN trade marks. The Respondent’s websites contain news and information related to the PHILIPP PLEIN brands. The figurative mark appears prominently, and several photos of PHILIPP PLEIN official items and of the Complainant’s advertising campaigns are displayed, on the Respondent’s websites. This does not constitute a legitimate noncommercial or fair use of the disputed domain names as they create the impression of an affiliation between the Complainant and the Respondent. No disclaimer or explanatory text is provided on the Respondent’s websites. Further, at least two of the Respondent’s websites contain the wordings “philippplein Official website” and “philippplein Chinese official website”. These add to the false impression that the disputed domain names are handled directly or indirectly by the Complainant.
iii) The disputed domain names were registered and are being used in bad faith. The disputed domain names contain a very well-known trade mark which was used without the Complainant’s authorization. The fact that the Respondent’s websites reproduce the Complainant’s trade mark PHILIPP PLEIN and the figurative mark and the said marks were registered by the Complainant long before the registration date of the disputed domain names, show that the disputed domain names were registered and used in bad faith. The Respondent’s websites give the impression that they are official (Chinese) websites of the Complainant. The disputed domain names contain identical elements, namely the words “philipp” and “plein” and the letters “pp”. The intention of the Respondent is clear, namely to prevent the Complainant from reflecting its trade marks in a corresponding domain name. This is all the more so since the “pp” is a clear reference to the Complainant’s figurative trade mark. The Respondent’s failure to reply to the Complainant’s cease and desist letters is also evidence of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding
The Complainant requested that English apply as the language of the proceeding albeit the Registration Agreement is in Chinese. The reasons are these: Neither the Complainant nor its representatives understands Chinese. It would be burdensome and expensive for the Complainant to have to translate the Complainant and annexes into Chinese. It would also delay the administrative proceeding. There are portions of the Respondent’s websites which contain English words, which show that the Respondent has an understanding of English. Furthermore, the disputed domain names comprise Latin characters and not Chinese script, most probably to attract potential international customers. Since the disputed domain names are used for business or commercial purposes, it is most likely that the Respondent knows English.
Paragraph 11(a) of the Rules states that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”
Per paragraph 10 of the Rules, the Panel has an obligation to ensure that administrative proceedings take place with due expedition, whilst bearing in mind the need to consider the interests of the respective parties.
Having considered the circumstances in this case, the Panel is persuaded that it would be acceptable for English to be the language of the proceeding. The disputed domain names comprise letters from the Latin alphabet and a European name in combination with the Latin script gTLD “.com”. The Respondent’s familiarity with this well-known brand from Europe and the couple of English words which the Complainant pointed to which are in English, are an indication of a level of understanding the Respondent has of the English language. This prima facie deduction can of course be rebutted by the Respondent. The Respondent could have responded to state its request for Chinese to be adopted. However, no response was forthcoming. To require the Complainant to translate the Complaint and supporting evidence into Chinese would cause a significant delay in the proceeding. Bearing in mind the fact that the Center has provided to the Respondent communications in Chinese and English and the Respondent had the opportunity to respond in the proceeding and on the issue of the language, the Panel finds that the Respondent has not been prejudiced. Accordingly, the Panel accepts the Complaint as filed in English, and will proceed to issue its decision in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has shown it has trade mark rights in PHILIPP PLEIN and in the figurative mark. The Panel is of the view that the first disputed domain name <philipp-plein-pp.com> is essentially identical or confusingly similar to the Complainant’s said trade marks. It comprises the PHILIPP PLEIN words and the letters which are found in the figurative mark. The PHILIPP PLEIN words are recognizable in the first disputed domain name. The hyphen does not constitute a relevant distinctive difference, nor does the gTLD “.com”. The same may be said of the other two disputed domain names <pp-philipp-plein.com> and <pp-philippplein.com>, both of which comprise the same common elements.
The Complainant has therefore established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
With regard to paragraph 4(a)(ii) of the Policy, paragraph 4(c) provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
Notwithstanding the Respondent’s failure to file a Response, the Complainant is required to establish its case in compliance with the Policy. Nevertheless, in relation to the second requirement under paragraph 4(a) of the Policy, it has been well recognized by previous UDRP panels that complainants are, generally speaking, limited in their capacity to prove the respondent’s lack or rights or legitimate interests in the domain name concerned. The Panel agrees with the general view that complainants need to establish at least a prima facie case that the respondent has no rights or legitimate interests, after which the burden of production shifts to the respondent to come forward with evidence to indicate otherwise.
In this case, the Panel finds that the Complainant has succeeded in making out a prima facie case. There is no evidence to suggest that the Respondent has been commonly known by the name “Philipp Plein”. Further, the evidence does not show a bona fide offering of goods or services, or legitimate noncommercial or fair use of the disputed domain names. The PHILIPP PLEIN trade mark may be considered to be well known. Bearing this in mind and the fact that the Complainant’s trade mark registrations were secured many years ago, and the Complainant’s trade marks include the element “pp”, it is highly unlikely that the Respondent independently and by pure coincidence chose to register the disputed domain names. In fact, the Respondent’s websites show a clear and deliberate reference to the Complainant’s trade marks and brand name.
The Respondent has failed to rebut the Complainant’s prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
In the light of the finding on the second element of paragraph 4(a) of the Policy, the reputation of the Complainant and its PHILIPP PLEIN trade marks, as well as the content of the Respondent’s webpages, the Panel concludes that the disputed domain names were registered and are being used in bad faith. It is obvious from the Respondent’s websites that the Respondent was well aware of the Complainant’s trade mark rights in PHILIPP PLEIN and the figurative marks. The Panel infers that the Respondent registered the disputed domain names with the intention to trade on the goodwill and reputation of the Complainant and of the Complainant’s trade marks for the purposes of monetary gain (see paragraph 4(b)(iv) of the Policy). Further or in the alternative, it appears that the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting its trade marks in a corresponding domain name (see paragraph 4(b)(ii) of the Policy). The “pattern of such conduct” can be seen from the series of the three disputed domain names, all of which comprise the PHILIPP PLEIN trade marks with the letters “pp”. The Panel draws a negative inference from the Respondent’s failure to file a Response and to respond to the Complainant’s cease and desist correspondence.
The Panel therefore finds that the Complainant has satisfied the third requirement under paragraph 4(a) 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 <philipp-plein-pp.com>, <pp-philipp-plein.com> and <pp-philippplein.com> be transferred to the Complainant.
Date: August 21, 2017
1 The Complainant stated in the Complaint that the disputed domain name <philipp-plein-pp.com> resolved to an inactive site. However, the Panel noted when preparing its Decision that <philipp-plein-pp.com> resolved to an active website, largely similar to the other websites of the Respondent.