The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Ludwig Rhys of China. 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 January 21, 2015. On January 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2015, 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 January 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on February 17, 2015.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 23, 2015. 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 following facts, relevant to the Panel’s determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant owns several valid and subsisting trademark registrations for the word PHILIPP PLEIN (the “Mark”) including International Registration No. 794860 with a registration date of December 13, 2002 and Community Trademark Registration No. 002966505 with a registration date of January 21, 2005 for goods including clothing in Class 25. The Respondent registered the disputed domain name on July 15, 2014, and has established a website at the disputed domain name to offer for sale counterfeit versions of the Complainant’s clothing designs. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical or confusingly similar to the Mark because, among other things, the Mark and the disputed domain name contain identical words, and the counterfeit goods offered by the Respondent under the disputed domain name are identical to the goods covered under the Complainant’s trademark registrations. The Respondent has no rights or legitimate interests in the disputed domain name, according to the Complainant, because the Respondent has no registered trademark, there is no relationship between the Complainant and the Respondent, and the disputed domain name is being used to sell counterfeit goods. The Complainant argues the disputed domain name was registered and is being used in bad faith because the Respondent had the specific goal to profit from the sale of counterfeit versions of the Complainant’s products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark PHILIPP PLEIN in its entirety, as a dominant element, with additional words “online” and “shop” that do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s widely known PHILIPP PLEIN trademark.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark PHILIPP PLEIN.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent. Canon U.S.A., Inc. v. Miniatures Town,WIPO Case No. D2014-0948, citing:WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after complainant makes prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not pick up its burden to demonstrate rights or legitimate interests. And no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the purported offering for sale of unauthorized products cuts against a finding that the Respondent is engaged in a bona fide offering of goods or services. Had the Respondent submitted a response to the Complaint, it might have submitted evidence that the products offered at the disputed domain name were genuine, and advanced an argument casting it as a “reseller” or “distributor”. Absent any such evidence, however, the Panel credits the Complainant’s assertions that the products on the Respondent’s website are counterfeit. In any event, it appears that the website does not accurately and prominently disclose the registrant’s relationship with the trademark holder. Therefore, the relevant criteria for determining whether the Respondent is an authorized “reseller” or “distributor” (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) have not been met in this case.
Further, it does not appear that the Respondent is commonly known by the disputed domain name – the WhoIs record identifies the registrant as “Ludwig Rhys”. Nor does it appear that use of the disputed domain name is noncommercial or otherwise a fair use – the website to which the disputed domain name resolves offers for sale under the Mark.
The Panel concludes that the Complainant has established that the Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location”.
The Respondent registered and is using the disputed domain name in bad faith. Establishing a website to sell counterfeit products using a disputed domain name that incorporates the Complainant’s mark is what appears to be an example of bad faith registration and use under 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.
Evan D. Brown
Sole Panelist
Date: February 24, 2015
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