The Complainant is Philipp Plein of Lugano, Switzerland, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Vadim Tcibin of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2018. On February 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2018, 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 February 9, 2018 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 February 12, 2018.
The Center verified that the Complaint together with 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 February 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2018.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 23, 2018. 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is the German fashion designer Philipp Plein, founder of the eponymous brand.
The Complainant is the owner of the following trademark registrations:
(i) International trademark registration no. 794860 of December 13, 2002 for PHILIPP PLEIN words, covering goods in classes 3, 14, 18, 20, 21, 24, 25 and 28 and registered in many countries worldwide, including in Ukraine where the second Respondent is apparently located;
(ii) European Union trademark registration No. 012259503 for PHILIPP PLEIN with device filed on October 28, 2013 and registered on March 24, 2014, covering goods in classes 3, 14, 18, 20, 21, 24, 25 and 28; and
(iii) European Union trademark registration No. 002966505 for PHILIPP PLEIN words filed on December 6, 2002 and registered on January 21, 2005, covering goods in classes 3, 14, 18, 20, 21, 24, 25 and 28.
Previous UDRP panels have found the Complainant’s mark well known or with reputation. See for example Philipp Plein v. KIMINHA,WIPO Case No. D2017-1413; Philipp Plein v. Frans Noordermeer,WIPO Case No. D2017-0981; Philipp Plein v. Nexperian Holding Limited / Bing Wang, Wang Bing,WIPO Case No. D2017-1309; Philipp Plein v. OPPP OPPP,WIPO Case No. D2015-2377; or Philipp Plein v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-2401.
The disputed domain name was registered on December 6, 2017 and at the time of filing the Complaint, it resolved to an inactive webpage informing Internet users that the account is suspended. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its well-known trademark PHILIPP PLEIN, the Respondent has no rights or legitimate interests in the disputed domain name , and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds rights in the PHILIPP PLEIN trademark.
The disputed domain name reproduces the Complainant’s trademark PHILIPP PLEIN in its entirety and without any addition or alteration, only a hyphen separating the two words composing the mark.
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.site”, “.org”) is a technical requirement that may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark PHILIPP PLEIN, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0).
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting the Respondent has ever been commonly known by the disputed domain name.
The Respondent is not actively using the disputed domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant holds trademark rights for PHILIPP PLEIN since at least 2002. The disputed domain name was created in December 2017 and completely reproduces the Complainant’s distinctive mark.
At the time of filing of the Complaint, the disputed domain name was not actively used; the website corresponding to the disputed domain name displayed a defaulted page.
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the complainant’s mark and the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.
The Complainant’s trademark PHILIPP PLEIN is distinctive and well known in the fashion industry. The Respondent was properly notified by the Center with regard to the commencement of the present proceeding but it remained silent.
Further, the Respondent has registered the disputed domain name under a proxy service. Although the use of privacy and proxy services can be legitimate, the circumstances in which such services are used can impact a panel’s assessment of bad faith. In the present proceeding it appears that the second Respondent employed the privacy service, the first Respondent, merely to avoid being notified of the UDRP proceeding against it because it provided false or incomplete contact details in the WhoIs, since the written notice for this proceeding could not be delivered by the courier. Accordingly, the Panel finds that the use of a privacy service in the present case is an indicator of bad faith. See section 3.6 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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.
Marilena Comanescu
Sole Panelist
Date: March 28, 2018
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