WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Gueijuan Xu
Case No. D2017-2535
1. The Parties
The Complainant is Philipp Plein of Lugano of Switzerland, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Gueijuan Xu of Beijing, China.
2. The Domain Name and Registrar
The disputed domain names <philipppleinclearances.com>, <philipppleinuksales.com> and <philippponlinecheap.com> (the "Domain Names") 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 20, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 21, 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 January 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 23, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 31, 2018. 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 owns, inter alia, trade mark registrations for PHILIPP PLEIN in the European Union ("EU"), registered on January 21, 2005 with trade mark registration number 2966505; and Hong Kong, China, registered on September 24, 2007 with trade mark registration number 300960561 for, inter alia clothing.
It also owns a trade mark registration for PP in logo form registered, inter alia in Hong Kong, China, on July 3, 2014 with trade mark registration number 303054276 for, inter alia, clothing.
The Domain Names <philipppleinclearances.com> (registered on May 31, 2017), <philipppleinuksales.com> (registered on April 27, 2017) and <philippponlinecheap.com> (registered on February 5, 2017), have been connected to websites using the Complainant's name and logo to sell clothing that the Complainant says is counterfeit.
5. Parties' Contentions
The Complainant's contentions can be summarised as follows:
The Complainant is a well known designer recognised as a leading brand in the luxury fashion industry.
The Complainant owns trade mark registrations for PHILIPP PLEIN in the EU (first registered there in 2005) and Hong Kong, China for, inter alia, clothing. It also owns a trade mark registration for its PP mark in logo form registered, inter alia in Hong Kong, China in 2014 for, inter alia, clothing.
The Domain Names all direct to web sites purporting to offer items by the Complainant and contain pictures taken from the Complainant's original website and advertising campaigns.
With regard to <philipppleininuksales.com> and <philipppleinclearances.com> the Complainant's PHILIPP PLEIN mark is entirely contained in the Domain Names. The mere addition of dictionary terms such as "uk", "sales" and "clearances" rather than excluding a similarity with the Complainant's trade mark increases the likelihood of confusion since they are all related to fashion, the field in which the Complainant operates and suggests the websites attached to them are online points of sale for discounted goods of the Complainant.
With regard to <philippponlinecheap.com> it contains the first element of Complainant's trade mark and its PP mark. The addition of "online" and "cheap" does not affect the confusing similarity assessment as these words are descriptive and could be thought to be related to the Complainant's business.
The addition of the generic Top-Level Domain ("gTLD") ".com" is technically required and may be disregarded in the confusing similarity assessment.
Accordingly, the Domain Names are confusingly similar to the Complainant's earlier trade marks.
The Complainant has never authorised the Respondent to use its trade mark. The Respondent is not commonly known by the Domain Names and owns no trade mark rights relating to them.
The websites attached to the Domain Names reproduce the Complainant's figurative and verbal trade marks as well as official images taken from the Complainant's web site and offer for sale counterfeit items.
The Respondent is presenting its websites attached to the Domain Names falsely as official e-commerce platforms of the Complainant. Such activities cannot be a bona fide offering of goods or services or a legitimate non-commercial use. As such the Respondent does not have rights or legitimate interests in the Domain Names.
Such activities are also bad faith registration and use in that the Domain Names have been used to intentionally attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's website.
The Respondent has been the subject of three other adverse UDRP rulings including a case involving the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Names <philipppleininuksales.com> and <philipppleinclearances.com> combine the Complainant's PHILIPP PLEIN mark (registered in the EU and Hong Kong, China), the dictionary words "in", "uk" and "sales" or "clearances" and the gTLD ".com".
The addition of common commercial descriptive terms does not serve to distinguish <philipppleininuksales.com> and <philipppleinclearances.com> from the Complainant's PHILIPP PLEIN mark which is still identifiable within these domain names.
The Domain Name <philippponlinecheap.com> combines the first part of the Complainant's PHILIPP PLEIN mark with the common commercial terms "online" and "cheap". It is noted the consecutive repetition of the letter "p" may also be seen to refer to the Complainant's PP logo mark. Either way it is clear from the facts of the case and the other two domain names subject of the Complaint that the Respondent has registered this domain name to intend to refer to the Complainant and so the Panel finds that it is more likely than not that Internet users familiar with the Complainant and its trade marks would recognise the Complainant's trade marks in <philippponlinecheap.com> and holds that the addition of the common commercial terms "online" and "cheap" will not prevent this recognition.
The gTLD ".com" does not serve to distinguish the Domain Names from the Complainant's PHILIP PLEIN mark.
Accordingly, the Panel finds that the Domain Names are confusingly similar to marks in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Names. The Complainant has not authorised the Respondent to use its marks. The use of the Domain Names is commercial and so cannot be legitimate non-commercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services if it uses the domain name to divert Internet users to a web site competing with the Complainant under the Complainant's mark. Here the Respondent has, in fact, used the Complainant's name, logo and marketing images to imitate the official site of the Complainant in an act of passing off on all three sites attached to the Domain Names which cannot be bona fide use.
The Respondent has not answered the Complaint and has not provided any legitimate reason why it should be able to use the Complainant's trade marks in this way. As such, the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
The Respondent's use of the websites attached to the Domain Name is commercial and it is using those websites to compete in a confusing manner. The use of a sign highly similar to the Complainant's official logo and the Complainant's advertising images on the website attached to the Domain Name is a misrepresentation by Respondent. The use of the Complainant's logo and marketing photographs on the website attached to the Domain Names indicates that the Respondent was aware of the Complainant's rights at the time of registration and throughout the use of the Domain Names subject of the Complaint.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to websites by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of those websites under paragraph 4(b)(iv) of the Policy. This is also clearly designed to be competitive and disruptive and constitutes bad faith under paragraph 4(b)(iii) of the Policy. The Panel also notes that the Respondent has been subject to three adverse UDRP rulings including one brought previously by the Complainant. There would also appear to be a pattern of bad faith registrations sufficient to satisfy paragraph 4(b)(ii) of the Policy.
As such, the Panel believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith under paragraphs 4(b)(ii), (iii) and (iv) and has satisfied the third limb 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 Domain Names, <philipppleinclearances.com>, <philipppleinuksales.com>, <philippponlinecheap.com> be transferred to the Complainant.
Date: February 5, 2018