The Complainant is Philipp Plein of Lugano, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2016. On November 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2017.
The Center appointed Halvor Manshaus as the sole panelist in this matter on January 12, 2017. 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 Philipp Plein luxury brand.
The Complainant is the owner of several trademarks, including:
- International trademark PHILIPP PLEIN (word), reg. no. 794860, priority date July 8, 2002, for inter alia perfumery, leather, furniture, textiles, clothing and footwear in classes 3, 14, 18, 20, 21, 24, 25 and 28.
- International trademark PP (figurative), reg. no. 1098038, priority date April 05, 2011, for inter alia perfumery, leather, furniture, textiles, clothing and footwear in classes 3, 14, 18, 20, 21, 24, 25 and 28.
- European Union Trade Mark PP (figurative), app. no. 014806061, priority date September 29, 2015, for inter alia perfumery, leather, furniture, textiles, clothing, footwear and more in classes 3, 9 14, 18, 20, 21, 24, 25, 26, 28, 35 and 41.
The Complainant operates an ecommerce website through the domain name , through which the Complainant's Philippe Plein branded goods are offered for sale.
The Respondent is a limited liability company offering WhoIs privacy services – i.e. the real registrant of the domain is unknown. The Respondent is listed as the owner of the disputed domain name , first registered on August 26, 2016. As of the date of this decision, the disputed domain name resolves to an ecommerce website, through which Philipp Plein branded goods are offered for sale and on which the Complainant's trademarks are featured prominently. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The term "bestof" and a hyphen are not distinctive and do nothing to distinguish the disputed domain name from "PP", which is the only distinctive element within the disputed domain name. The term "PP" in the disputed domain name is clearly used as a reference to the Complainant's trademarks and brand.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not hold any registered trademark and there is no relationship between the Complainant and the Respondent.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. There is no relationship between the Complainant and the Respondent. The disputed domain name was registered on August 26, 2016, long after the registration of the Complainant's trademarks. The disputed domain name is used to sell counterfeit goods. The registration of the disputed domain name was primarily for the purpose of disrupting the business of the Complainant. By using the disputed 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. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant has, in accordance with paragraph 4(i) of the Policy, requested that the disputed domain name be transferred to the Complainant.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(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.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The disputed domain name, , comprises the clearly identifiable and dominant "PP" element of the figurative PP trademarks. The addition of a hyphen and the term "bestof", indicating that the website contains the best of PP and the extension ".com" is insufficient to distinguish the disputed domain name from the Complainant's trademark.
The Panel concludes that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel finds that the Respondent has not received any license or other permission to use the Complainant's trademarks or use any domain name incorporating or simulating these marks. Further, the Panel has not been presented with, or otherwise discovered, any evidence showing that the Respondent is commonly known by the disputed domain name or that it has acquired any trademark or service mark rights to use the name.
The term "pp" does not have a common dictionary meaning in the English language. The term is naturally understood as an abbreviation, commonly associated with inter alia the Complainant's business and trademarks. The disputed domain name is therefore naturally understood as a reference to the Complainant offering the best of Philipp Plein. The presented evidence referred to by the Complainant is, in the Panel's view, sufficient to establish prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. As held by the panel in Ticketmaster Corporation v. Global Access,WIPO Case No. D2007-1921, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name when such prima facie case is made.
The Respondent has not replied to the Complainant's contentions. The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. According to paragraph 4(b)(iv) of the Policy, this includes circumstances indicating that the Respondent has "intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] website or location or of a product or service on [its] website or location".
In the present case, the Panel considers that the following circumstances when seen together sufficiently indicate the Respondent's intent in this regard: (i) At the time of this decision, the disputed domain name resolves to an ecommerce website, through which Philipp Plein branded goods are offered for sale, in direct competition with the Complainant, (ii) the disputed domain name is well suited for creating an association with the Complainant for the commercial gain of the Respondent, (iii) the Complainant's trademarks are prominently and extensively used on the disputed domain name, without the Respondent having been granted any right to use the Complainant's trademarks, (iv) the Complainant has submitted that the goods sold through the disputed domain name are counterfeit goods, an allegation which has not been refuted by the Respondent, and (v) the Respondent has not substantiated any actual or contemplated good faith purpose for the registration of the disputed domain name and it is difficult to conceive of any such good faith purpose.
The Panel considers it obvious that the Respondent was aware of the Complainant's well-known and distinctive trademarks at the time of the registration of the disputed domain name and that the Respondent's intention was to set up a domain name which is confusingly similar to the Complainant's trademarks in order to facilitate the sale of counterfeit copies of the Complainant's goods.
The Panel thus concludes that the Respondent is using the fame of the Complainant's trademark to improperly increase traffic to its websites for the Respondent's own commercial gain, which constitutes 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.
Halvor Manshaus
Sole Panelist
Date: January 26, 2017
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