The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerR, Germany.
The Respondent is wang lin of GuangZhou, Guangdong Province, China. 2. The Domain Nam and Registrar
The disputed domain name is registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2013. On September 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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.
On September 23, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On September 26, 2013, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 October 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on Octobers 28, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 1, 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, Philipp Plein, is the owner of numerous trademark registrations for the PHILIPP PLEIN mark around the world. For example: International Trademark Registration No. 794860 – PHILIPP PLEIN with registration date of December 13, 2002; CTM Trademark Registration No. 002966505 – PHILIPP PLEIN with registration date of December 6, 2002.
The disputed domain name was registered on July 25, 2013.
From the evidence provided by the Complainant, it appears that the disputed domain name resolved to a website offering counterfeit Philipp Plein products for sale. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s PHILIPP PLEIN trademark and name.
The Complainant further contends that the addition terms “outlet” and “uk” does not avoid a finding of confusing similarity.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its PHILIPP PLEIN trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant argues that the disputed domain name was improperly registered and is being improperly used.
The Complainant further argues that the Respondent uses the disputed domain with the purpose of selling counterfeit goods. The registration of the disputed domain name was primarily for the purpose of disrupting the business of the Complainant. By using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks and the Complainant’s goods.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless 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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of English letters, rather than Chinese characters;
b) The disputed domain name consists of the English words “outlet” and “uk”;
c) According to evidence provided by the Complainant, the website under the disputed domain name used to resolve to an online marketplace, which operated in English;
d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for the decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner numerous trademark registrations for the PHILIPP PLEIN mark around the world. For example: International Trademark Registration No. 794860 – PHILIPP PLEIN with registration date of December 13, 2002; CTM Trademark Registration No. 002966505 – PHILIPP PLEIN with registration date of December 6, 2002.
The disputed domain name differs from the registered PHILIPP PLEIN trademark by the additional words “outlet” and “uk” and the additional gTLD “.com”.
The disputed domain name integrates the Complainant’s PHILIPP PLEIN trademark in its entirety, as a dominant element.
The additional words “outlet” and “uk” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as they are common terms in the Complainant’s field of business. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “the incorporation of the Complainant’s SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s marks” (Swarovski Aktiengesellschaft v. cao zhiming,WIPO Case No. D2012-1028).
Indeed, the disputed domain name entirely incorporates the PHILIPP PLEIN trademark, adding the suffixes “outlet” and “uk”. The addition of such generic suffix is not enough to avoid confusing similarity, nor does it add anything to avoid confusion: “[g]iven the fame and notoriety of the Complainant’s SWAROVSKI mark, the addition of the words “buy” and “jewelery” does not provide sufficient distinction from the Complainant”(Swarovski Aktiengesellschaft v. hanguo, WIPO Case No. D2012-0749 ).
Furthermore, the addition of a geographical name or indicator “uk” to a trademark, and in particular to the Complainant’s trademark, does not serve to differentiate the disputed domain name from the Complainant’s trademark: “[t]he geographical name “China” does not assist in distinguishing the disputed domain name from the Complainant’s mark. The fact that crystal beads are being manufactured by the Complainant for jewellery such as bracelets and necklaces as well as its substantial market in China as shown in Annexes D, G and H to the Complaint will make actual confusion among consumers even more likely” (Swarovski Aktiengesellschaft v. siqi Ai AKA aisiqi,WIPO Case No. D2010-2057 ).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the PHILIPP PLEIN trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark PHILIPP PLEIN (since the year 2002). It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name, it had intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the website or location.
The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
From the review conducted by the Panel, it appears that at the time of this decision the disputed domain name does not resolve to an active website. The Respondent’s passive use of the disputed domain name also indicates bad faith registration and use of the disputed domain name: “[t]he concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept” (See Cho Yong Pil v. Kee Dooseok,WIPO Case No. D2000-0754). See Also: “[t]he significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
Another indication for the Respondent’s bad faith use is the fact that, at the time the Complainant filed the Complaint, the disputed domain name resolved to an active website which appeared to offer counterfeit copies of the Complainant’s products without disclosing the Respondent’s relationship (or the lack thereof) with the Complainant. Such use of the disputed domain name is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these.
The Respondent’s actions in total therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademark and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s mark, the Respondent’s registration and use of the disputed domain name with no conceivable explanation for doing so, the Respondent’s passive use of the disputed domain name the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Jonathan Agmon
Sole Panelist
Date: November 13, 2013
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