The Complainant is Philipp Plein of Lugano, Switzerland represented by LermerRaible IP Law Firm, Germany.
The Respondent is Angie Abbott, Angie of Tazewell, Tennessee, United States of America (“United States”). 2. The Domain Name And Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 7, 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 October 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2016. The Respondent submitted an informal communication on October 17, 2016. However, no formal response was submitted.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on November 10, 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 owns a company, PHILIPP PLEIN International AG, which is named after the Complainant and sells clothing products worldwide through its website . The Complainant is the owner of several PLEIN and PHILIPP PLEIN trademarks, inter alia, PLEIN, European Union Trade Mark (“EUTM”) Registration Number 010744837, which was registered on August 1, 2012 and designated in classes 3, 14, 18, 20, 21, 24, 25 and 28; PHILIPP PLEIN, International Registration Number 794860, which was registered on December 13, 2002 and designated in classes 3, 14, 18, 20, 21, 24, 25 and 28, and PHILIPP PLEIN, EUTM Registration Number 002966505, which was registered on January 21, 2005 and designated in classes 3, 14, 18, 20, 21, 24, 25, 28.
The Domain Name was registered on July 11, 2016 and resolved to a website offering for sale of Philipp Plein branded clothing products according to the evidence submitted by the Complainant. The Panel is not able to access any website under the Domain Name when rendering the decision. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its trademarks. The Domain Name is comprised of the Complainant’s trademark PLEIN, which is also the Complainant’s family name, and the word “outlet”, which is not distinctive and unable to distinguish the Domain Name from the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent does not own a registered trademark. There is no relationship between the Complainant and the Respondent. Moreover, the Domain Name is being used to sell counterfeit goods.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. 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 creates the likelihood of confusion with the Complainant’s trademarks and goods, attempting to attract for commercial gain, Internet users to the Respondent’s website. B. Respondent
The Respondent only acknowledged receipt of the notification of the proceedings by email but did not submit a formal response to the Complainant’s contentions. 6. Discussion And Findings A. Identical or Confusingly Similar
The Complainant has successfully established its rights over the trademarks, among others, PLEIN, EUTM Registration Number 010744837, which was registered on August 1, 2012 and designated in classes 3, 14, 18, 20, 21, 24, 25 and 28; PHILIPP PLEIN, International Registration No. 794860, which was registered on December 13, 2002 and designated in classes 3, 14, 18, 20, 21, 24, 25 and 28, and PHILIPP PLEIN, EUTM Trademark Registration Number 002966505, which was registered on January 21, 2005 and designated in classes 3, 14, 18, 20, 21, 24, 25 and 28..
The Domain Name, , comprises “plein” and the generic term “outlet”. The Domain Name incorporates the Complainant’s distinctive trademark PLEIN in its entirety. The UDRP jurisprudence has established that incorporation of a complainant’s distinctive trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. The addition of the generic term “outlet” is not sufficient to avoid confusion between the Domain Name and the trademark. See Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett,WIPO Case No. D2008-1053.
As such, the Panel holds that the Domain Name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name, and the burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition paragraph 2.1.
The Panel also notes that, upon receiving the notice of the present proceedings, the Respondent did not submit any substantial argument in response to the Complainant’s contentions, but rather shut down the website under the Domain Name. This suggests that the Respondent has no rights or legitimate interests in the Disputed Domain Name. See Construction Skills Certification Scheme Limited v. Mara Figueira,WIPO Case No. D2010-0947.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel notes that the Domain Name was registered in 2016, while the earliest registration of the Complainant’s trademarks was in 2002, long predating that of the Domain Name. The Complainant has been distributing clothing products bearing its PHILIPP PLEIN marks for years, prior to the Respondent’s registration of the Domain Name. The Panel further notes that the website to which the Domain Name resolves was previously offering for sale of PHILIPP PLEIN branded clothing. The Panel holds that the Respondent must have been well aware of the Complainant’s trademarks at the time of registering the Domain Name, and that the Respondent’s registration of the Domain Name, containing the Complainant’s trademarks, without any rights or legitimate interests is indicative of bad faith in the registration of the Domain Name.
The Complainant has asserted that it has not authorized the Respondent to use its trademark, and the products sold on the website appear to be counterfeit as claimed by the Complainant. Unauthorized use of the Complainant’s trademark and offer of counterfeit versions of the Complainant’s products on the website amount to bad faith. See Cartier International, N.V., Cartier International, B.V. v. David Lee,WIPO Case No. D2009-1758.
The Panel notes that the addition of the generic term “outlet” to the Complainant trademark creates a likelihood of confusion between the Domain Name and the Complainant’s products. By registering the Domain Name, the Respondent has intentionally attempted to trade on the goodwill associated with the Complainant’s mark in order to attract traffic to the website under the Domain Name and make profit therefrom. The bad faith in use of the Domain Name hence can be established under paragraph 4(b)(iv) of the Policy.
Furthermore, the Respondent was well aware of the proceedings but did not submit any response to the Complainant’s contentions, and later shut down the website under the Domain Name.
For the reasons above, the Panel concludes that the Respondent has registered and is using the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Date: November 23, 2016
Full & Egal Universal Law Academy