The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Seth Ward of Apalachicola, Florida, United States of America (“United States”). 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 June 18, 2015. On June 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 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 July 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2015.
The Center appointed Edoardo Fano as the sole panelist in this matter on July 30, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules, and the Supplemental Rules and without the benefit of a Response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is a fashion designer and owns several trademark registrations for PHILIPP PLEIN, his name and surname, among which there are:
- Community Trademark Registration No. 002966505, registered on January 21, 2005;
- International Trademark Registration No. 794860, registered on December 13, 2002.
The Complainant provided evidence in support of the above.
The disputed domain name was registered on November 26, 2014. At the time of filing of the Complaint, the disputed domain name resolved to a website where Philipp Plein products are offered for sale. According to the Complainant, these products have been verified as counterfeit. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its trademark PHILIPP PLEIN.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to register the disputed domain name or to use its trademark within the concerned website, nor is the Respondent offering bona fide goods for sale.
The Complainant claims that the website at the disputed domain name offers for sale counterfeit products bearing the Complainant’s trademark PHILIPP PLEIN.
The Complainant therefore submits that the Respondent has registered and is using the disputed domain name in bad faith, since it was registered with the only purpose to disrupt the business of the Complainant and attract Internet users for commercial gain by creating confusion with the Complainant’s trademark. B. Respondent
The Respondent has not replied to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; and Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Panel finds that the Complainant is the owner of the trademark PHILIPP PLEIN and that the disputed domain name is confusingly similar to the trademark PHILIPP PLEIN.
Regarding the addition of the generic word “premium”, the Panel notes that it is now well established that the addition of generic or geographic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; and America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the word “premium” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
Should the products sold on the website to which the disputed domain name resolves be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using a domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to initial interest confusion.
According to the UDRP panel decisions in relation to the issue of resellers, as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3:
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
This summary is mainly based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
On the other hand, should the products offered for sale on the website to which the disputed domain name resolves be counterfeit products, that would be clear evidence that the Respondent does not have rights or legitimate interests in the disputed domain name.
In the present case, the Panel is reluctant to accept the unsupported allegation of counterfeiting asserted by the Complainant as based only on mere conclusory statements.
According to the UDRP panel decisions in relation to the issue of a respondent default and a complainant’s unsupported allegations as summarized in the WIPO Overview 2.0, paragraph 4.6:
“A respondent’s default does not automatically result in a decision in favor of the complainant. (…) 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.”
Therefore the Panel considers that the Complainant’s claim that the goods sold on the website to which the disputed domain name is redirecting Internet users are counterfeited is not adequately supported, since it is not proved in any way in the Complaint.
Nevertheless, the Panel does not consider necessary to invite the Complainant to file supplemental submissions in order to prove the above, not only to keep the UDRP as simple and speedy as it should be, but also for the following reasons.
Nevertheless, even if the products sold by the Respondent were the Complainant’s genuine products, from inspection of the Respondent’s website, the Panel finds that the use of the Complainant’s logo in the homepage, the lack of any disclaimer and especially, under the section “Conditions of Use”, paragraph “3. Copyright”, the statement that “All the information posted on our website such as text, graphics, information, content, and other material displayed or that can be downloaded belong to the property of our company” would falsely suggest to the Internet users, under the Oki Data principles (see above), that the website to which the disputed domain name resolves is owned by the Complainant or at least affiliated to the Complainant.
The Panel therefore concludes that the disputed domain name is not being used in connection with a bona fide offering of goods or services.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
As regards to the registration in bad faith of the disputed domain name, the existence of the Complainant’s trademark PHILIPP PLEIN in the field of fashion was certainly known by the Respondent since the content of the website to which the disputed domain name resolves consists of advertising for the sale of various purported Complainant products.
The Panel further notes that the disputed domain name is also being used in bad faith since the Respondent is trying to attract Internet users to its website by creating likelihood of confusion with the Complainant’s trademark PHILIPP PLEIN in order to sell products bearing the Complainant’s trademark PHILIPP PLEIN, an activity clearly detrimental to the Complainant’s business.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order both to disrupt the Complainant’s business, in accordance with paragraph 4(b)(iii) of the Policy, and to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For all 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.
Edoardo Fano
Sole Panelist
Date: August 3, 2015
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