The Complainant is 3.1 Phillip Lim LLC, Phillip Lim LLC of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is PrivacyP / Domain Admin, Private Registrations AktienGesellschaft, of Nobby Beach, Queensland, Australia and Kingstown, Saint Vincent And The Grenadines, respectively. 2. The Disputed domain name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On January 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2013, 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 15, 2013, 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 17, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2013.
The Center appointed Antony Gold as the sole panelist in this matter on February 15, 2013. 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 company founded in 2005, and is a manufacturer and seller of luxury products including designer clothing, accessories and footwear. It was founded by Mr. Phillip Lim, whom the Complainant describes as “the creative force” behind its business.
The Complainant says that it trades under the styles “3.1 Phillip Lim” and “Phillip Lim”. The Complainant has secured extensive trade mark protection, the details of which are considered below. Sales of the Complainant’s branded products in the last 5 years have approached USD 600 million. The Complainant also operates a website at the domain name which it says has been in use since 2004.
The disputed domain name was registered on April 5, 2006. As at that time the Complainant says that it had been using its 3.1 PHILLIP LIM and PHILLIP LIM marks for at least one year. It had been advertising its products internationally and had sold appreciable quantities of branded goods, specifically over USD 3.5 million in 2005 alone.
The website which has been operated by the Respondent at the disputed domain name, since the date of registration, comprises a directory or parking page which is used to generate pay-per-click income for the Respondent. Some of the links at the website contain references to the Complainant including “3.1 Phillip Lim” and “3.1 Phillip Lim Sale”. Clicking on the links, however, leads visitors to competitors of the Complainant and/or to unauthorized retailers of the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical or confusingly similar to its 3.1 PHILLIP LIM and PHILLIP LIM marks. It says that it has both registered and unregistered rights in these marks. As evidence of its registered rights, it has appended to its Complaint a schedule of its registered trademarks. In support of its claim to have unregistered rights, the Complainant has produced extensive evidence from a multiplicity of sources, and spanning a number of years, in order to demonstrate the reputation of 3.1 PHILLIP LIM and PHILLIP LIM worldwide. This evidence includes extracts from fashion editorials and commentary on fashion shows as well as press articles about the business conducted by the Complainant.
The Complainant says that the disputed domain name incorporates, in its entirety, and consists exclusively of its PHILLIP LIM trademark and Mr. Lim’s personal name, it being the case that the “.com” suffix is invariably disregarded for the purpose of making this comparison.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name because it is identical to the Complainant’s mark. It says that the Respondent is not commonly known by the disputed domain name and that the Complainant has not authorized the Respondent to use the PHILLIP LIM trade marks. It contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, nor is it making a legitimate noncommercial or fair use of the disputed domain name. The Complainant says that the only reason the Respondent registered and is using the disputed domain name is that it knew of, and wanted to trade on, the Complainant’s fame. The Complainant asserts that the burden of proof is on the Respondent to establish its rights or legitimate interests in the disputed domain name.
In support of its assertions that the disputed domain name was registered and used in bad faith, the Complainant says that the Respondent acquired the disputed domain name after the Respondent had already become famous. It says that the inevitable effect of use of the disputed domain name by the Respondent will be to cause confusion with the Complainant. It submits that the actual use of the disputed domain name is in bad faith and it draws attention to a number of decisions under the UDRP which have held, in similar circumstances, that the use of a domain name to connect to a website which provides listings and sponsored links has been found to constitute bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 14(b) of the Policy provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The voluminous material submitted by the Complainant in support of its contention that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights shows that, save in isolated cases, the Complainant’s primary trading style is 3.1 PHILLIP LIM and not PHILLIP LIM. This is reflected in the list of trademarks submitted by the Complainant; in almost every country in which the Complainant has sought protection, the mark applied for or obtained has been 3.1 PHILLIP LIM (the mark sometimes being depicted in lower case). In fact, the Complainant only has a single registered trademark for PHILLIP LIM namely a United States trademark granted in October 2007. Indeed, the corporate name of the Complainant suggests that it had been its intention from the date of formation to trade as “3.1 Phillip Lim”, rather than “Phillip Lim”. In most instances the documents provided by the Complainant indicate that “Phillip Lim” is normally used to describe Mr. Lim, the individual, and 3.1 PHILLIP LIM is the brand or trading style of the Complainant.
Nonetheless, the Panel finds that this element of the Policy is satisfied. First, paragraph 4(a) of the Policy only requires that the disputed domain name is identical to a (emphasis added) trademark or service mark in which the Complainant has rights. In other words, a single mark is sufficient for these purposes, and the fact that every other registered mark of the Complainant is for 3.1 PHILLIP LIM does not matter. Second, the Complainant can also rely on unregistered trademark rights. Among the volume of material submitted by the Complainants there is evidence that PHILLIP LIM is occasionally used by third parties as a shorthand for the Complainant’s primary brand, and it is clear that goodwill in that name has accrued to the Complainant. Third, whilst 3.1 PHILLIP LIM is a brand name distinctive in its own right, it is nonetheless also confusingly similar to PHILLIP LIM. In the context of the Internet, a party seeking the Complainant’s website could easily think it might be found on the Respondent’s website at the disputed domain name. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark for PHILLIP LIM in the United States and to the Complainant’s registered trademark 3.1 PHILLIP LIM.
Accordingly, the Panel finds that the first element of the Complaint is made out. B. Rights or Legitimate Interests
There is nothing in the material submitted by the Complainant to suggest that the Respondent is known by the disputed domain name or has acquired any right to use the disputed domain name through any other means. The Panel accepts the Complainant’s contention that the disputed domain name is not being used in connection with a bona fide offering of goods and services and that there are no other factors which might point towards a legitimate basis for the Respondent’s use of the disputed domain name. The Respondent has had the opportunity to set out the basis, if any, by which it claimed to be entitled to use the disputed domain name but has chosen not to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of the Complaint is made out. C. Registered and Used in Bad Faith
In the context of the facts outlined above, establishing registration of the disputed domain name in bad faith requires a finding that the Respondent will have had at least some knowledge of the Complainant’s trademark and activities as at the date of registration of the disputed domain name.
At the time that the disputed domain name was registered, the Complainant was already well established as a business, albeit at a much more modest level than currently. The Complainant says that its business was “an instant success”. It says it had sold USD 3.5 million worth of its goods in 2005, and a further USD 13 million in 2006. It also asserts that, by the time of the registration of the disputed domain name, it was an internationally known fashion house and that Mr. Lim had received extensive praise from press and media outlets around the world.
For the purpose of determining whether the Respondent had the Complainant’s business in mind as at the time of its registration of the disputed domain name, it is material to have regard to the repute of the Complainant as at April 2006. Regrettably, the copious materials submitted by the Complainant are of little assistance in this respect t. Accordingly, the only evidence available to the Panel on this issue are the unchallenged assertions of the Complainant as to its fame at that time.
There is no means to ascertain any information about the Respondent other than what is available on the record, and it has chosen not to serve a Response. What, if any, inferences, should the Panel draw from the Respondent’s failure to respond? In this respect, the Panel intends to adopt an approach similar to that taken by the panel in Betsson Malta Limited v. John Droker,WIPO Case No. D2010-0883. As was pointed out in that decision, a failure to respond is part of the factual circumstances of the case and can be relevant to an assessment of the Complainant’s case. It is therefore reasonable to draw a generally adverse inference against the Respondent because (amongst other possibilities) it tends to suggest that the Respondent thinks its own case is too weak to attempt to defend, or that it does not deny the Complainant’s case. In the view of the Panel, it is particularly appropriate to do this where, as in this case, the Complainant’s case is inherently credible and there is nothing in the evidence submitted to suggest that it is incorrect. For this reason, in the absence of any Response from the Respondent, the Panel finds, on balance, that the Respondent had the Complainant’s business (and its intellectual property rights) in mind as at the date of registration. On this basis, the Panel finds that the intended use of the disputed domain name was then, as now, to earn income from traffic visiting the website and accordingly the Panel finds that the registration was made in bad faith. See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 3.1.
The Respondent’s use of the disputed domain name is also in bad faith. As the Complainant says, use of a disputed domain name in these circumstances for the purpose of a directory page which takes the form of that described by the Complainant (for pay-per-click links) falls within the conduct described at paragraph 4(b) (iv) of the Policy. In other words, the Panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website of the products displayed on the website and the third element of the Complaint is made out. 7. Decision
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, be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: February 21, 2013
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