The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Manalo Ricard of Cancun, Mexico / Domain Admin, Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2016. On June 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 13, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 13, 2016.
The Center verified that the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2016.
The Center appointed Gunnar Karnell as the sole panelist in this matter on July 26, 2016. 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 disputed domain name was registered on September 25, 2015.
The Complainant is the owner of several trademarks, by many years predating the registration of the disputed domain name, e.g., the International trademark PHILIPP PLEIN No. 794860 registered in 2002 and the European Union Trade Mark PHILIPP PLEIN No. 002966505 registered in 2005, reflecting the Complainant’s personal name. The trademarks give rights for, among other goods, clothing and footwear (class 25). 5. Parties’ Contentions A. Complainant
The disputed domain name, identical or confusingly similar to the Complainants trademarks, has been used and it is still used to sell counterfeit “philipp plein” products. The goods offered by the Respondent under the disputed domain name are confusingly similar to those protected by the Complainant’s trademarks which are sold worldwide by his company.
The word “outlet” and the hyphen (-) in the disputed domain name are not distinctive and do not distinguish the disputed domain name from the Complainant’s trademark PHILIPP PLEIN.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no relationship between the Complainant and the Respondent. The disputed domain name is used to sell counterfeit goods and its registration was primarily for the purpose of disrupting the Complainant’s business. By using the disputed domain name the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating confusion with the Complainant’s trademarks and the Complainant’s goods. The additive “outlet” gives the erroneous impression that the online shop on the Respondent’s website be the official outlet shop from the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must satisfy the three elements required under paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark;
(ii) The Respondent lacks rights or legitimate interests in 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 notwithstanding differences, indicated as irrelevant by the Complainant, and the omission of the space in the disputed domain name between the terms “philipp” and “plein” standing separate in the Complainant’s trademarks, the disputed domain name is confusingly similar to the Complainant’s trademarks.
Accordingly, the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant has, based on its contentions as summarized at Section 5 A above, established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.
The Respondent offers for sale products bearing the Complaint’s mark without any indication of its relationship to the Complainant. On the contrary, users arriving at the disputed domain name may believe that the website may be affiliated or endorsed by the Complainant or that it belongs to the Complainant. Such use cannot be considered a bona fide offering of goods under the Policy.
The Panel finds that the Complainant has made out the second limb of the Policy in that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
It seems self-evident based on the use described above that the Respondent registered the disputed domain name with the Complainant’s mark in mind. Further, the Respondent is using the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source or affiliation of the website. The Panel therefore, finds that the disputed domain name has been registered and used in bad faith.
The Panel finds that the Complainant has made out the third limb 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.
Gunnar Karnell
Sole Panelist
Date: July 28, 2016
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