The Complainant is Philipp Plein of Lugano, Switzerland, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Frans Noordermeer of Arnhem, the Netherlands. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 17, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 May 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 19, 2017.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on June 23, 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 the German fashion designer Philipp Plein, who founded the luxury fashion brand of the same name. The Complainant's brand is sold internationally, with more than 36 brand stores and 500 retail clients all over the world.
The Complainant submitted evidence that he holds trademark rights for PHILIPP PLEIN (the "Trademarks"), in the European Union for several classes, including the European Union word mark PHILIPP PLEIN, registered on January, 21, 2005 under No. 002966505 and the European Union figurative mark containing the word element "PHILIPP PLEIN", registered on March 24, 2014 under No. 012259503.
The disputed domain names and were registered on October 4, 2016. At the time of filing of the Complaint, the disputed domain names resolved to parking pages of a hosting provider. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain names are confusingly similar to the registered rights in which the Complainant has rights.
The disputed domain names fully incorporate the Complainant's Trademarks. The Complainant asserts that this sole fact suffices to establish identity or confusing similarity under the Policy.
The Complainant further asserts that the Top-Level suffix is generally disregarded for the purposes of establishing identity or confusing similarity, and that, when the Top-Level suffix ".shop" is removed, the disputed domain names are identical to his Trademarks.
The Complainant therefore asserts that the disputed domain names are confusingly similar to his Trademarks.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant asserts that he has rights in PHILIPP PLEIN and that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant affirms that the Respondent has not been authorized to use his Trademarks in the disputed domain names or in any other ways. The Complainant also affirms not to be in possession or aware of any evidence showing that the Respondent would be commonly known under the disputed domain names or have any trademarks corresponding to them.
The Complainant further contends that the disputed domain names are currently inactive and have never been used. Hence, the disputed domain names would not be used in connection with a bona fide offering of goods or services and the Respondent would not be making a legitimate noncommercial or fair use of them.
The Complainant asserts that the disputed domain names were registered to mislead any potential consumers and prevent the Complainant from using his Trademarks. According to the Complainant, this is proved by the fact that the Respondent registered many other domain names and has been subject to other UDRP proceedings.
(c) The disputed domain names were registered and are being used in bad faith.
The Complainant asserts that the disputed domain names were registered in bad faith as they contain the very well-known Trademarks of the Complainant, and in particular in the Netherlands. Moreover, the disputed domain names were registered long after the filing and registration of the Trademarks.
The Complainant submits that the fact that the Respondent has not used the disputed domain names is a clear indication of bad faith. According to the Complainant, this is supported by the fact that his Trademarks have a strong reputation and are registered in the Netherlands, and the fact that the Respondent was never authorized to use the Trademarks. Internet users would moreover automatically link the disputed domain names with the Complainant's Trademarks, and the disputed domain names would only be held in order to prevent the Complainant from using them. Finally, the Complainant asserts that the Respondent initially declared that he was willing to transfer the disputed domain names, but later required a payment of EUR 1,250 for the transfer of each disputed domain name.
According to the Complainant, all of the above circumstances show that the disputed domain names were registered for the purpose of selling or renting the disputed domain names and that, accordingly, the Respondent registered and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain names are identical or confusingly similar to his trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in PHILIPP PLEIN.
Secondly, the disputed domain names fully incorporate the Complainant's PHILIPP PLEIN Trademarks in which the Complainant has exclusive rights.
Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain ".shop" to the disputed domain names does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see: Carlsberg A/S v. Xu Guo Xing,WIPO Case No. D2017-0301; Philip Morris USA Inc. v. Shimei Wang,WIPO Case No. D2016-2517; Livelle v. Martijn Noordermer,WIPO Case No. D2016-2524).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain names are confusingly similar to the Complainant's PHILIPP PLEIN Trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain names.
There is no evidence that the Respondent is commonly known by the name "Philipp Plein" or is in any way affiliated with the Complainant or authorized to use the Trademarks.
Furthermore, there is no evidence that the Respondent has used the disputed domain names in connection with a bona fine offering of goods or services or that the Respondent would have made a legitimate noncommercial or fair use of the disputed domain names. In fact, this Panel believes, after having examined the evidence submitted by the Complainant, that the Respondent registered the disputed domain names with the intention of selling them for an amount in considerable excess of his out-of-pocket expenses.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
"For the purposes of paragraph 4(a)(iii), 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 you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of "registration and use of a domain name in bad faith."
First of all, with regard to the Respondent's registration of the disputed domain names, this Panel believes, after reviewing the evidence presented by the Complainant, that the Respondent must have known and been aware of the Complainant's rights on the prior PHILIPP PLEIN Trademarks and the associated products and services at the time of registration of the disputed domain names. The Trademarks are distinctive and
well-known and were registered long before the disputed domain names. The subsequent conduct of the Respondent supports this finding.
Although it appears that the disputed domain names have been used passively only, this does not prevent a finding of bad faith use (see: MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231; OSRAM GmbH v. Igor Ostapenko,WIPO Case No. D2013-0899; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In light of the evidence presented by the Complainant, in particular the fact that the Respondent offered to sell the disputed domain names for valuable consideration in excess of his out-of-pocket expenses related to the disputed domain names, this Panel finds that the disputed domain names were used in bad faith. This is consistent with the paragraph 4(b)(i) of the Policy, according to which the sale for valuable consideration in excess of out-of-pocket expenses constitutes compelling evidence of registration and use in bad faith (see also: Federated Western Properties, Inc., v. Top Bell,WIPO Case No. D2002-0469; Irotama S.A. v. Richard Bonn,WIPO Case No. D2010-1784; Adamovske Strojirny v. Tatu Rautiainen,WIPO Case No. D2000-1394).
The above is further substantiated by the fact that the Respondent has already been involved in another UDRP proceeding in which several domain names were transferred to the trademark owner (see: Edgewell Personal Care Brands, LLC v. Frans Noordermeer,WIPO Case No. D2016-2440).
In light of the foregoing, this Panel finds that the disputed domain names were registered and are being used by the Respondent in bad faith 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 names and be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: July 7, 2017
Full & Egal Universal Law Academy