WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philipp Plein v. Protection of Private Person, Privacy Protection / Igorevski Aleksey
Case No. D2018-0062
1. The Parties
The Complainant is Philipp Plein of Lugano, Switzerland, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Protection of Private Person, Privacy Protection of Moscow, Russian Federation / Igorevski Aleksey of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <philip-plein.info> is registered with REG.RU LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 11, 2018. On January 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2018, 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 January 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 15, 2018.
The Complaint and amended Complaint were submitted in the English language. The language of the Registration Agreement for the disputed domain name is Russian. On January 12, 2018, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding as indicated in the Complaint. The Respondent did not reply to the Center's communication regarding the language of the proceeding, nor did it reply to the Complainant's submission.
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 of the Complaint in both the Russian and English languages, and the proceedings commenced on January 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default in both the Russian and English languages on February 13, 2018.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 19, 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 is the German fashion designer Philipp Plein, founder of the eponymous brand.
The Complainant is the owner of the following trademark registrations:
(i) International trademark registration of December 13, 2002, No. 794860 for PHILIPP PLEIN, covering goods in classes 3, 14, 18, 20, 21, 24, 25 and 28.
(ii) European Union trademark registration of March 24, 2014, No. 012259503 for PHILIPP PLEIN, covering goods in classes 3, 14, 18, 20, 21, 24, 25 and 28.
(iii) European Union trademark registration of August 1, 2012, No. 010744837 for PLEIN covering goods in classes 3, 14, 18, 20, 21, 24, 25 and 28.
The disputed domain name was registered on December 12, 2017. On January 18, 2018, the disputed domain name resolved to a website offering for sale alleged Philipp Plein's items and displaying the PHILIPP PLEIN mark. Currently, the disputed domain name resolves to an inactive webpage.
5. Parties' Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the PHILIPP PLEIN mark and the PLEIN mark. The disputed domain name is a clear misspelling of the Complainant's trademark. The element PHILIP does not contain the final letter "P", which instead composes the Complainant's trademark and name. Moreover, the disputed domain name contains the PLEIN mark in its entirety.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not its authorized dealer, agent, distributor, wholesaler or retailer. The Complainant claims that it is not aware of the existence of any evidence tending to demonstrate that the Respondent is commonly known by the disputed domain name, as individual, business, or other organization. Furthermore, the Complainant asserts that the Respondent makes no use of the disputed domain name "in connection with a bona fide offering of goods or services" as the disputed domain name is currently linked to a website offering alleged Philipp Plein's goods and mirroring the Complainant mark.
Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith. In particular, the Complainant contends 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. According to the Complainant, the Respondent could not ignore the existence of the PHILIPP PLEIN mark at the time of the registration of the disputed domain name, not only because this mark is well-known worldwide, but also in consideration of the website's content which involves the Complainant's goods and mark. Next, the disputed domain name has been registered long after the registration of the Complainant's marks. The Complainant also emphasizes that the use of the disputed domain name as described above may cause substantial damages not only to the Complainant, but also to consumers who share their sensitive information with the Respondent with the concrete risk that this information is fraudulently used.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that "[u]nless 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."
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that neither the Complainant, nor its representatives, understand Russian, "to the best of its knowledge" English is a language of the registration agreement and thus it would be burdensome and expensive for the Complainant to translate the Complaint with all its annexes into Russian. The Complainant also emphasized that the disputed domain name is registered in Latin characters and the website linked to the disputed domain name contains English words.
The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainant's language request. Notification of the Compliant was also sent to the Respondent in English and in Russian, however, the Respondent has not participated in these proceedings in any way.
As the website linked to the disputed domain name includes English words, it is probable that the Respondent can communicate in English. Moreover, the Panel believes that it would be unduly burdensome to require the Complainant to invest money and time in translating the Complaint along with the annexes. In this light, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
B. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's PLEIN mark. Moreover, the relevant part of the disputed domain name "philip-plein" is an obvious misspelling of the PHILIPP PLEIN mark, which makes it confusingly similar to the Complainant's mark. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain suffix ".info" may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
Therefore, the Panel finds that the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way (nor is there any indication of this at the website); (b) the Respondent is neither licensed nor authorized by the Complainant to use its marks; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, the use of the disputed domain name to create a website mirroring the Complainant's mark and its own website as well as offering goods under the Complainant's brand cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the disputed domain name was registered when the Complainant had already obtained trademark registrations for PHILIPP PLEIN and PLEIN. In the Panel's opinion, the notoriety of use of the Complainant's mark all around the world and the similarity of the disputed domain name with the mark itself indicates that the Respondent knew or should have known about the Complainant's rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Secondly, by mirroring the Complainant's mark at, the website under the disputed domain name creates the impression that it belongs to the Complainant. Creating such a website by the Respondent suggests registration and use in bad faith (see The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388).
In addition, the Respondent used a privacy shield for the registration of the disputed domain name. While the use of a privacy shield cannot be considered in itself as use of bad faith, once connected with additional elements, it may suggest registration and use in bad faith (Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571).
The Panel finds that the conditions of paragraph 4(b)(iv) of the Policy are present in this case.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is 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 <philip-plein.info> be transferred to the Complainant.
Date: March 5, 2018