The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Randall Deruyter of Sunnyside, Washington, United States of America (“US”). 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 May 12, 2014. On May 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2014, 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 June 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2014. On June 20, 2014, the Center resent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent’s correct email addresses, as one of the Respondent’s email addresses had been incorrectly used previously. The due date for Response was duly extended to June 28, 2014. On June 11 and 12, 2014, the Center received email communications from the Respondent, claiming that he is the victim of identity theft. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of the process to panel appointment on June 30, 2014.
The Center appointed David J.A. Cairns as the sole panelist in this matter on July 3, 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 the Rules, paragraph 7.
Due to exceptional circumstances, it has been necessary to extend the date of the decision to the date mentioned at the end of the decision. 4. Factual Background
The Complainant is a German fashion designer that leads the company carrying his own name Philipp Plein, established in 1998 and based in Switzerland.
The Complainant is the registered owner of Community Trademark No. 010744837 for the word mark PLEIN registered on August 1, 2012 in various categories. It is also the registered owner of the following trademark registrations for the word mark PHILIPP PLEIN: US Trademark No. 78195112 registered on August 3, 2004; International Trademark No. 794860 registered on December 13, 2002; and Community trademark No. 002966505 registered on January 21, 2005. All of these trademark registrations include goods in class 25 (clothing and footwear).
The disputed domain name was registered on March 11, 2014.
The Panel viewed from Spain the website hosted at the disputed domain name on July 16, 2014. The landing page at the disputed domain name prominently displayed the PHILIPP PLEIN trademark and logo. The landing page offered for sale various PHILIPP PLEIN clothing items. There were various links including a link entitled “about us” which included the following:
“Philipp Plein Outlet
has always stood for providing quality products, creating worlds and inviting people to take part in our dream. We were the innovators of lifestyle advertisements that tell a story and the first to create stores that encourage customers to participate in that lifestyle.
Welcome to our store!
sells many series of philipp plein. We have many suppliers in china which can supply us products. So we can supply the best products at best and cheap price with best customer service. We are waiting to do business with all friends in the world. We will be one of your best partners. Also we could do whole with all friends, please contact us directly through philipppleinoutlet@ or our online customer service.”
Under the heading “Philipp Plein” there were various categories of clothing products. There were a large number of items offered, and all were PHILIPP PLEIN products. There were also links to enable the Internet user to register on the website, and to complete purchases.
The metadata of the landing page includes the following keywords and description.
“
” 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is at least partly identical to its trademark. The Complainant argues that the disputed domain name has only been selected in order to include the keyword “plein” in the disputed domain name, and that the disputed domain name is used to lead customers (via search engines) to a fake site, where the Respondent offers goods identical to those offered by the Complainant. The Complainant states that disguising the trademark PLEIN in a domain name is a relatively new phenomenon and refers to the parallel case which also includes the trademark PLEIN.
The Complainant further contends that the Respondent has neither rights nor a legitimate interest in the disputed domain name. The Complainant alleges that the Respondent has no registered trademark and that there is no relationship between the Complainant and the Respondent. Moreover, the Complainant submits that the disputed domain name is used to sell counterfeit goods and to lead customers typing the keyword “plein” in a search engine to the fake shop.
The Complainant finally submits that the disputed domain name is being used in bad faith. The Complainant alleges that the Respondent uses the disputed domain name with the purpose of selling counterfeit goods. The Complainant further alleges that the registration of the disputed domain name was primarily for the purpose of disrupting the business of the Complainant and that 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.
The Complainant requests that the Panel transfer the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
Nevertheless, the following email was sent to the Center on June 11, 2014:
“To Whom It May Concern:
My name is […], and I am contacting you on behalf of my brother […] in regards to this Case No. D2014-0779.
It appears that this may be a case of mistaken/stolen identity. […] has never created any websites, and has absolutely NO connection to the creation of “”.
In the paperwork you sent, it shows the following contact information:
“[…]”
The only correct information that connects to […] is his name, and home address. The phone number is not connected to him, and he has never created or used any of the three email addresses listed. Therefore we have also not received any information on this case that may have been sent via email.
Again, it appears that whomever created this fictitious website has used […]’s name and home address as their own.
Please let me know if you have any further questions. We would appreciate a response to let us know that this message has been received.
Thank you,
[…]”
On June 12, 2014 the Center received the following message from the same address:
“We understand. Thank you for your response, and please keep us informed of any updates.” 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the PLEIN and PHILIPP PLEIN registered trademarks referred to above.
The disputed domain name is not identical with the Complainant’s trademark. The disputed domain name incorporates the Complainant’s PLEIN trademark entirely. However, this is not a typical case where a domain name includes a trademark in its entirety together with a descriptive prefix or suffix, negative term or another trademark. Rather the disputed domain name consists of a meaningful phrase (“support people in need”), and is likely to be pronounced in that way by an Internet user. The trademark (consisting of the last three letters of “people” and the word “in”) appears in the disputed domain name as entered in the web browser.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 states that “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [...] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name .”)
In the current case the PLEIN trademark is not apparent in a visual comparison of the trademark with the disputed domain name, as the eye immediately discerns the English phrase, and does not sound at all in an aural comparison. Nor is there an element of “conceptual allusion” to the trademark in the non-trademark elements of the disputed domain name (see RapidShare AG and Christian Schmid v. majeed randi,WIPO Case No. D2010-1089, paragraph 6.8). At first sight this is an example of a personal name, not recognizable as such, subsumed within a common phrase comprising the disputed domain name.
The novelty in this case is the allegation that the PLEIN trademark has been embedded within the disputed domain name in this manner not to deceive Internet users visually or aurally, but via their search engines. The allegation is that the inclusion of the trademark PLEIN in the disputed domain name increases the likelihood that Internet users will arrive at the Respondent’s website when searching for the Complainant’s products.
The Complainant has not provided any evidence of the effects of the inclusion or omission of a trademark in the disputed domain name on the search results or rankings of results. Rather, the Complainant makes the conclusionary assertion that the disputed domain name “is used to lead customers (via search engines) to this fake sight. The name ‘supportpeoPLEIN’ has only been selected in order to include the keyword PLEIN right in the domain name.” This statement is based on an inference (why else would a website devoted to the sale of counterfeit goods include the trademark in the disputed domain name?), but cannot be accepted as a proven fact without elaboration or evidence. It is neither demonstrated nor self-evident that inclusion of a search term (here the PLEIN trademark) in a domain name will have more than a trivial effect on search results where the search term appears a large number of times in the content of the webpages, appears in the metadata, and may also attract the search engine by other means.
There are also possible evidential issues regarding the interpretation of search results by Internet users. Trademark confusion in a domain name context requires that Internet users are likely to be confused. In this case the alleged confusion is indirect by the effect of the inclusion of the trademark in the disputed domain name on the search results. However, there is a very real question of how Internet users interpret search results, and whether this amounts to confusion. Is an Internet user likely to be confused by ranking alone? Internet users disregard many search results, and may well disregard a result where they do not recognize the trademark in the search result. Further, if an Internet user sees the disputed domain name in a search result and does not recognize the trademark embedded within it, but nevertheless continues to the website, can they be said to have been confused by the disputed domain name? There are existing legal doctrines that are potentially applicable to these questions (e.g. initial interest confusion) but the point for present purposes is that it is by no means self-evident that an improvement in search rankings will inevitably lead to domain name confusion.
Under the UPRP Policy a respondent’s default does not automatically result in a decision in favor of the complainant: “…paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case” (WIPO Overview 2.0, paragraph 4.6). Further, the relative effect of the appearance of the trademark in a domain name on search engine results is not a matter of common knowledge or public record, or otherwise appropriate for the Panel’s own investigation (cf. WIPO Overview 2.0, paragraph 4.5).
The Panel has considered whether the two facts that the trademark PLEIN is incorporated in the disputed domain name in its entirety, and that the website at the disputed domain name clearly targets the PLEIN trademark, are sufficient by themselves to satisfy the confusing similarity test. Confusing similarity “is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient legal rights so as to give it standing to bring a complaint” and this is “an approach that means that in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” (Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227). Further, while the test “ involves a comparison between mark and domain name only […] that does not mean that the content of the website cannot in some cases provide a pointer as to how Internet users will perceive a domain name that in turn might inform the relevant comparison” (RapidShare AG and Christian Schmid v. majeed randi,WIPO Case No. D2010-1089; see also Schering-Plough Corporation, Schering Corporation v. Dan Myers,WIPO Case No. D2008-1641). However, while the Panel sees these two elements as strong indicators of confusing similarity, they cannot in this case be sufficient in themselves. Ultimately, and even though the standard is low, an element of confusion-visual, aural, conceptual or technological-must also be demonstrated. Here, the Complainant has alleged technological confusion and simply failed to demonstrate it.
Accordingly, the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s trademark, and the Complaint is therefore dismissed. The result might appear hard on the Complainant, facing online trademark infringement by a vendor of purported counterfeit products, but confusing similarity and bad faith are separate and cumulative criteria under the Policy. In an appropriate case, a complainant may be able to demonstrate confusion of Internet users through the operation of search engines, but in this case >no causal connection between the embedding the PLEIN trademark in the disputed domain name and confusion of Internet users has been demonstrated.
Further, a consequence of the Complainant’s argument is that any trademark appearing in a domain name would satisfy the confusing similarity test on the basis that it would be recognized within the domain name by search engines. On this basis, to take the example from WIPO Overview 2.0 paragraph 1.2, the domain name would be confusingly similar to the trademark HEAT. This result changes the current understanding of confusing similarity, and suggests that even if confusion by technological effect were accepted, visual or aural characteristics cannot be disregarded entirely. In this case, the Complainant has also failed to satisfy paragraph 4(a)(i) of the Policy on the grounds that that there is no visual or aural confusion at all in the present case between the PLEIN trademark and the disputed domain name. It is not sufficient that the trademark is only visible when the viewer is told it is definitely there.
The UDRP is not a universal remedy for Internet trademark abuse, but rather for the specific abuse of cybersquatting that has not been demonstrated here. This decision does not foreclose the Complainant’s rights to seek relief for the alleged abuses of the PLEIN trademark in other jurisdictions or on other grounds or evidence.
As the Complainant fails under paragraph 4(a)(i) of the Policy the Panel is not required to consider the other elements of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
David J.A. Cairns
Sole Panelist
Date: July 30, 2014
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