The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Henry Compte of Paris, France. 2. The Domain Name and Registrar
The disputed domain name (the “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 August 2, 2016. On August 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 2, 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 Complainant is a German fashion designer and founder of the luxury brand “Philipp Plein”.
The Complainant owns several trademarks PHILIPP PLEIN, e.g. the International Trademark no. 794860, registered on December 13, 2002 and the European Union Trade Marks no. 002966505, registered on January 21, 2005 and no. 014806046, registered on June 16, 2016, inter alia for goods in class 25 (clothing, footwear).
The Respondent registered the Domain Name on August 25, 2015. The Domain Name resolves to a website offering products resembling the Complainant’s and bearing his brand, yet not made or authorized by the Complainant, for sale. 5. Parties’ Contentions A. Complainant
The Complainant has documented his trademark registrations in the Complaint. Moreover, “Philipp Plein” is the Complainant’s name. According to the Complainant, the Domain Name was registered by the Respondent to sell counterfeit PHILIPP PLEIN products. The goods offered by the Respondent under the Domain Name are the same as the goods protected by the trademarks of the Complainant.
The Complainant argues that the Respondent has not been commonly known by the Domain Name, and that the Respondent has no history of using the Domain Name in connection with a bona fide offering of goods and services. There is no relationship whatsoever between the parties and the Complainant argues that the Respondent uses the Domain Name to sell counterfeit goods, using the Complainant’s name.
Finally, the Complainant repeats that the Respondent uses the Domain Name with the purpose of selling counterfeit goods. The registration of the Domain Name was primarily for the purpose of disrupting the business of the Complainant. By using the 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. According to the Complainant, this proves bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that he has rights in the trademark PHILIPP PLEIN.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark, but with the surname and the family name in reverse order, combined with a hyphen.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.net”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent does not have registered trademarks or trade names corresponding to the Domain Name. Nor is there any evidence suggesting that the Respondent has been using “ Plein” Philipp in a way that would give him legitimate rights in the Domain Name. The Complainant has not granted any authorization to the Respondent.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. On the contrary, it seems like the Respondent uses the Domain Name to sell counterfeit goods.
The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainant’s trademark and his business when he registered the Domain Name. The Complainant has used his trademark long before the registration of the Domain Name and has gained considerable notoriety. The fact that the Respondent used the Domain Name to sell what appears to be counterfeit goods further indicates that he had the Complainant and his rights in mind when registering the Domain Name. The Panel finds registration in bad faith.
The Panel also finds use of the Domain Name in bad faith. The Panel finds on balance that the sale of counterfeit goods and the lack of any explanation from the Respondent, indicate use in bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) 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 Name be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: September 5, 2016
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