The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerR, Germany.
The Respondent is Slocorriernorri Billaaa of Norvenich, Germany. 2. The Domain Names And Registrar
The disputed domain names, , , and (the “Domain Names”), are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2013. On November 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 8, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is the proprietor of inter alia Community Trade Mark No. 002966505 dated December 6, 2002 (registered January 21, 2005) PHILIPP PLEIN (words) in classes 3, 14, 18, 20, 21, 24, 25 and 28 for a wide variety of goods including inter alia perfumery goods, furniture, and clothing.
The Domain Names were registered on June 14, 2013 and as at November 12, 2013 were connected to a website selling PHILIPP PLEIN branded clothing. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith, asserting that the website to which the Domain Names are connected is offering for sale counterfeit PHILIPP PLEIN goods. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith. B. Identical or Confusingly Similar
The Domain Names each comprise the Complainant’s trade mark, PHILIPP PLEIN, the generic “.com” top level domain identifier and between those elements a descriptive and/or generic term i.e. “Milano”, “nl” and “online” respectively. In the view of the Panel, none of those intervening terms is sufficient to affect the distinctiveness of the Complainant’s trade mark.
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant asserts that the Complainant has no connection with the Respondent and has given the Respondent no permission to use the Complainant’s trade mark. Self-evidently, the Respondent’s name does not bear any relation to the Complainant’s trade mark. The Complainant also asserts that the Respondent is using the Domain Names in order to sell counterfeit goods.
The Panel finds that the Respondent has a case to answer, but the Respondent has provided no answer. Ordinarily, the Panel would have had no difficulty in finding in the Complainant’s favour on this basis, but extraordinarily the Complaint contains no evidence to support the contention that the PHILIPP PLEIN goods being offered for sale on the Respondent’s website are counterfeit. It is at least possible, therefore, that the Respondent is a re-seller of genuine goods of the Complainant.
In cases involving re-sellers, the criteria generally applied are those set out in the much-cited case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and reflected in the following passage from paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder”
The screenshots of the Respondent’s website exhibited to the Complaint show that the Respondent has made no attempt to distance itself from the Complainant. Indeed, to the Panel’s eye those screenshots demonstrate that the Respondent has set out to indicate an official connection with the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Names for the purpose of selling counterfeit goods, but as indicated above has provided the Panel with no concrete evidence to support such a finding.
While it may well be that the Complainant’s assertion is well-founded, the Panel prefers to decide the case by reference to the fact that the Respondent’s website falsely indicates an official connection with the Complainant.
The Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Names, , and be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: January 10, 2014
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