The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany.
The Respondent is Ryan Talbo of Red Deer, Canada. 2. The Domain Name and Registrar
The disputed domain name (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 January 8, 2016. On January 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 12, 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 January 21, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was February 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 16, 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, Philipp Plein, is a fashion designer who designs and sells apparel for men and women under his name.
The Complainant owns, in particular, the following trademarks (the “Trademarks”) for many goods and services in connection with clothing and footwear, as well as related goods and accessories:
- The International trademark PHILIPP PLEIN No. 794860 registered on December 13, 2002 and duly renewed.
- The Community trademark PHILIPP PLEIN No. 2966505 registered on January 21, 2005 and duly renewed.
The Disputed Domain Name was registered on November 7, 2015. At the time the Complaint was filed, the website at the Disputed Domain Name redirected to a page promoting and selling what appear to be counterfeits of the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant asserts that he has registered several trademarks for the sign “Philipp Plein” in a number of countries.
The Complainant submits that the Disputed Domain Name is confusingly similar to his Trademarks seeing that it consists of the sole and entire reproduction of these Trademarks.
The Complainant has exclusive and prior rights on the PHILIPP PLEIN Trademarks and the Respondent has no right or legitimate interests in respect of the Disputed Domain Name. Indeed, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s Trademarks.
The Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith. At the time of registration of the Disputed Domain Name, and because it consists of the reproduction of the Complainant’s Trademarks, the Respondent had constructive knowledge of the Trademarks.
The Respondent has intentionally chosen the Disputed Domain Name based on the Complainant’s Trademarks in order to disrupt the Complainant’s business.
By using the Disputed Domain Name, the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademarks and with the purpose of selling counterfeit goods.
For the forgoing reasons, the Complainant requests that the Disputed Domain Name be transferred from the Respondent to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is therefore in default. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that a respondent’s default does not automatically result in a decision in favor of the complainant. Although the Panel may draw appropriate inferences from a respondent’s default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Name and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
At the same time, in accordance with paragraph 14(b) of the Rules:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant’s reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts (see Harrods Limited v. Harrod’s Closet,WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that he has rights in a trademark and secondly that the Disputed Domain Name is identical of confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of the Trademarks.
The Panel therefore turns to the second part of the inquiry.
It is well-established that “a domain name that wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP” (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888).
In the present case, the Disputed Domain Name incorporates the Complainant’s PHILIPP PLEIN Trademarks in their entirety without other words or letters.
Regarding the addition of the country code Top-Level Domain (“ccTLD”) “.co” to the Disputed Domain Name, “a principle which applies to all the domain names is that the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names (“.com”, “.net”) does not change the assessment of confusing similarity” (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In these circumstances, the Panel finds that the Disputed Domain Name is confusingly similar to the Trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name:
“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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant’s Trademarks.
The Respondent’s name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Trademarks or the Disputed Domain Name. Furthermore, there is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods and services.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in light of the Complainant’s evidence that the Respondent’s intention was to benefit from the Trademarks’ reputation to disrupt the Complainant’s business and to illegitimately trade on its fame for commercial gain and profit.
The Respondent has not rebutted this by way of a formal Response or otherwise and the way that the Respondent has been “using” the Disputed Domain Name, see below under section C, does not support a finding of rights or legitimate interests.
Moreover, the Complainant asserted, and the Respondent has made no effort to refute these allegations, that the goods offered through the Respondent’s website were not in fact genuine goods, but were rather counterfeits.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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.”
In the Panel’s view, the Respondent had knowledge of the Complainant’s trademarks when registering the Disputed Domain Name. Indeed, the Disputed Domain Name incorporates the Complainant’s PHILIPP PLEIN Trademarks in their entirety without other words or letters. Moreover, the website at the Disputed Domain Name redirects to a page promoting and selling what appear to be Philipp Plein products.
The Complainant asserts that the Disputed Domain Name has been used to offer for sale counterfeit products under the Trademarks via the website at the Disputed Domain Name. Such use of a domain name to facilitate the sale of counterfeit goods constitutes evidence of bad faith.
The Panel finds the Respondent’s conduct in registering the Disputed Domain Name and offering for sale counterfeit branded merchandise via its website at the Disputed Domain Name, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy.
By registering and using the Disputed Domain Name, the Respondent had intentionally attempted to disrupt the Complainant’s business and capitalize on its reputation. See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
In the absence of any explanation from the Respondent, the Panel finds more likely than not that the Respondent intentionally registered a domain name identical to the Trademarks to benefit from the goodwill associated with the Complainant’s Trademarks and is using the Disputed Domain Name to intentionally attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Trademarks.
Noting that the Disputed Domain Name solely comprises the particular PHILIPP PLEIN Trademark, together with the ccTLD “.co”, that no response has been filed, and considering all facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Nathalie Dreyfus
Sole Panelist
Date: February 25, 2016
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