The Complainant is Philipp Plein of Amriswil of Switzerland, represented by LermerR, Germany.
The Respondent is Slocorriernorri Billaaa of Norvenich, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2013. On July 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2013.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 26, 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 has submitted evidence that it is the owner of a number of PHILIPP PLEIN trademark registrations, including:
PHILIPP PLEIN, international trademark registration No. 794860 with registration date December 12, 2002.
PHILIPP PLEIN, United States trademark registration No. 78195112 with registration date August 3, 2004.
PHILIPP PLEIN, Community trademark registration No. 2966505 with registration date January 21, 2005.
The disputed domain name was registered by the Respondent on June 14, 2013. 5. Parties’ Contentions A. Complainant
The Complainant’s trademark PHILIPP PLEIN and the main part of the disputed domain name “philipppleinoutlet” are identical. The only difference between is the describing word “outlet” at the end of the domain name. The goods offered by the Respondent under the disputed domain name are identical to the goods protected by the trademark of the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no relationship between the Complainant and the Respondent. The disputed domain name is being used to sell counterfeit PHILIPP PLEIN goods. The registration of the disputed domain name was made primarily for the purpose of disrupting the business of the Complainant. When using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark and the Complainant’s goods. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Considerations
The Complainant filed an email communication with attached documents requesting permission to add further domain names to the Complaint. The Panel denies the Complainant’s request since it would cause substantial delay in the final resolution of this dispute. The Complainant may file a separate complaint for the additional domain names if it so desires. The Panel will proceed to the merits of the case with respect to the disputed domain name .
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark PHILIPP PLEIN. The disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of “outlet”, which is a descriptive term commonly used to designate a type of store where manufacturers sell products directly to consumers at discounted prices. The ability for a generic term, such as “outlet”, to distinguish the domain name from the trademark of the Complainant is limited. In fact, the addition of the term to the trademark may lead Internet users to believe that the Complainant operates and sells products through the website associated with the disputed domain name.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark PHILIPP PLEIN and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the PHILIPP PLEIN trademark in connection with the disputed domain name , which is confusingly similar to the trademark.
The disputed domain name is being used by the Respondent to sell the Complainant’s products. It has been argued by the Complainant, that the products sold by the Respondent are counterfeit. Furthermore, the Respondent does not disclose the nature of its relationship with the Complainant on the website at the disputed domain name. Thus, the evidence in the case indicates that the Respondent is neither making a bona fide offering of goods or services, nor a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that it is commonly known by the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
The Complainant’s PHILIPP PLEIN trademark registrations predate the registration of the disputed domain name . Furthermore, the Respondent is using the disputed domain name to sell the Complainant’s products. According to the Complainant, the products offered for sale on the website to which the disputed domain name resolves, are counterfeit PHILIPP PLEIN products. In the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark when registering the disputed domain name. The Respondent does not disclose the nature of its relationship with the Complainant on the website at the disputed domain name.
The evidence submitted in the case before the Panel therefore indicates that the disputed domain name has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b)(iv) of the Policy and that the disputed domain name has been registered and used in bad faith. 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.
Johan Sjöbeck
Sole Panelist
Date: October 8, 2013
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