WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Nexperian Holding Limited / Long Zhi Chao
Case No. D2017-1791
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 / Long Zhi Chao of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <philipppleinshop.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2017. On September 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 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 September 25, 2017.
On September 23, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On September 25, 2017, the Complainant confirmed its request that English 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 September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on November 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 the German fashion designer Philipp Plein, founder of the brand Phillipp Plein, a leading brand in the luxury fashion industry with more than 36 mono-brand stores and over 500 retail clients worldwide.
The Complainant is the owner of the following trademarks:
International Registration No. 794860 (extended, among others, to China)
December 13, 2002
3, 14, 18, 20, 21, 24, 25 and 28;
European Union Registration No. 012259503
March 24, 2014
3, 14, 18, 20, 21, 24, 25, 28;
European Union Registration No. 002966505
January 21, 2005
3, 14, 18, 20, 21, 24, 25, 28
The Complainant is also the owner of the domain name <philipp-plein.com>.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Long Zhi Chao of Shanghai, China.
The disputed domain name <philipppleinshop.com> was registered on July 6, 2017. The disputed domain name resolves to a website featuring the Complainant’s trademark and displaying and offering for sale numerous products bearing the Complainant’s trademarks. Internet users can buy products in connection with the Complainant from the website under the disputed domain name. The website does not provide any contact information.
5. Parties’ Contentions
Identical or confusingly similar:
The Complainant submits that the disputed domain name contains its registered international trademark PHILIPP PLEIN in full which may mislead the public that the disputed domain name is somehow connected to the Complainant.
The Complainant also submits that the addition of a generic and descriptive word “shop” does not mitigate the confusing use of the trademark; instead, rather than excluding a similarity with the Complainant’s trademark, it increases the likelihood of confusion, since the word “shop” refers to the kind of activity generally performed through a website, i.e., a selling of clothing.
The Complainant further submits that the generic Top-Level Domain (“gTLD”) “.com” should be discarded when assessing whether a domain name is identical or confusingly similar to a trademark.
No rights or legitimate interests:
The Complainant submits that the Respondent is not holder of the trademark PHILIPP PLEIN, has no rights or legitimate interests in the trademark PHILIPP PLEIN, and is not commonly known by the disputed domain name.
The Complainant also submits that the Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of Philipp Plein, and the Complainant has never authorized the Respondent to include its trademark in the disputed domain name, nor to make any other use of its trademark in any manner whatsoever.
The Complainant further submits that the Respondent is using the original images of the Complainant’s past and actual advertising campaigns therefore increases the likelihood of confusion for the relevant consumer and constitutes a clear violation of the Complainant’s copyright.
Registered and is being used in bad faith:
The Complainant submits that since its trademark is well known in China and globally and predates the registration of the disputed domain name, and the Respondent has used the Complainant’s trademark and the photos of the Complainant’s official advertising campaigns on the website of the disputed domain name, the Respondent was or should have been aware of the PHILIPP PLEIN trademark prior to registering the disputed domain name and this constitutes bad faith.
The Complainant further submits that by offering alleged PHILIPP PLEIN goods and depicting copyrighted pictures taken from the Complainant’s official website, the use of the disputed domain name is not in good faith and may cause substantial damage not only to the Complainant, but also to consumers who, when purchasing on the Respondent’s website, share confidential information which is at risk of being stolen or used fraudulently by the Respondent.
Therefore, the Complainant submits that the disputed domain name has been registered and is used to intentionally attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s official website, also creating the impression that the Respondent’s website is sponsored/affiliated or endorsed by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement is in Chinese. However, paragraph 11(a) of the Rules provides that:
“unless otherwise agreed by the parties, or specified 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.”
The Complainant requested the language of the proceeding be in English on the grounds that neither the Complainant, nor its representatives, understand Chinese therefore it would be quite burdensome and expensive for the Complainant to translate this Complaint and all its annexes to Chinese. Furthermore, the Complainant submitted that translation would unnecessarily delay the proceeding and unduly increase the damages resulting from the Respondent’s allegedly abusive use of the disputed domain name. The Complainant also submits that the Respondent has registered a domain name composed of English common words using the Latin alphabet, and the website to which the disputed domain name redirects is entirely in English therefore suggesting that the Respondent has knowledge of the English language.
The Respondent has not responded to the proceeding nor to the request for the language of the proceeding to be in English.
In the case of Zappos.com, Inc. V. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, this panel decided that the respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.”
Based on the fact that English is used as the only language on the website under the disputed domain name and that the Respondent has not responded to the Center’s notification of a language request the Panel determines the language of proceedings to be English.
6.2 Substantive Decision
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <philipppleinshop.com> contains the Complainant’s PHILIPP PLEIN trademark in full, the word “shop”, and is followed by the gTLD “.com”.
The panel finds the disputed domain name is confusingly similar to the Complainant’s registered trademark PHILIPP PLEIN. The gTLD is disregarded and the addition of the descriptive word “shop” is insufficient to dispel any confusion.
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
The Respondent has no connection with the Complainant and has never sought or obtained any trademark registrations for the trademark PHILIPP PLEIN. The Respondent is not a licensee of the Complainant and is not commonly known as <philipppleinshop.com>. Based on these facts, and further to the Panel’s findings under bad faith below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
It is clear that the Respondent knew of the Complainant when the Respondent registered the disputed domain name as it comprises of the Complainant’s trademark in full and a descriptive word, followed by the gTLD “.com”. The disputed domain name has been used to advertise and offer PHILIPP PLEIN products without providing any contact information of the Respondent. This indicates the Respondent’s intention was to cause confusion so that Internet users believe that the site was linked to the Complainant’s business.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Having examined all the circumstances of the case the Panel finds that the Respondent registered, used and is using the disputed domain in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <philipppleinshop.com> be transferred to the Complainant.
Date: November 22, 2017