The Complainant is Philipp Plein of Amriswil, Switzerland represented by LermerRaible IP Law Firm, Germany.
The Respondent is Ryan Talbo, Ryan, of Red Deer, Alberta, Canada. 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 September 16, 2016. On September 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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. On September 22, 2016, the Center transmitted to the Registrar an email, copying the Parties, regarding the expiry date for the disputed domain name. The Registrar responded to the Center on September 23, 2016, confirming the Lock of the disputed domain name and requesting the Parties to renew the disputed domain name in order to avoid that it falls into a renewal grace period and eventually be available for general registration. On September 27, 2016, the Center acknowledged receipt of the Registrar’s email communication and urged the Parties to follow the instructions of the Registrar to renew the disputed domain name. The Center also made the Parties aware that it is not the role of the Center to ensure that the disputed domain name remains active.
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 September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2016.
The Center appointed George R. F. Souter as the sole panelist in this matter on November 3, 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 is a retailer of clothing products internationally. Details of the Complainant’s trading activities have been supplied to the Panel.
The Complainant is the owner of several trademark registrations protecting its PHILIPP PLEIN trademark, including International Registration No. 794860 and Community Trademark Registrations Nos 002966505 and 014806046 in connection with, inter alia, goods in class 25 (clothing, footwear), details of which have been supplied to the Panel.
The disputed domain name was registered on December 8, 2015, and currently resolves to a website that appears to be offering for sale counterfeit products. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its PHILIPP PLEIN trademark, incorporating the Complainant’s trademark in its entirety, with the mere addition of the descriptive or non-distinctive element, “outlet”.
The Complainant alleges that the Respondent has neither rights nor legitimate interests in respect of the domain name, in particular that there is no relationship between the Complainant and the Respondent and that the disputed domain name is being used to sell counterfeit goods, especially marked with the Complainant’s name and registered trademarks. Details of the use of the website operated under the disputed domain name, showing the offer of sale of counterfeit products, have been supplied to the Panel.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with the offer for sale of counterfeit products, as detailed above. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers that the same principle extends to the country-code Top-Level Domains (“ccTLD”), in this case “.co”.
The disputed domain name incorporates the Complainant’s PHILIPP PLEIN trademark in its entirety, with the mere addition of the element “outlet”. It is well-established in prior decisions under the UDRP that the mere addition of descriptive or non-distinctive element to a trademark in which a complainant has rights is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel finds that “outlet” is clearly a descriptive or non-distinctive element.
The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity provided by these proceedings to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainant’s PHILIPP PLEIN trademark was incorporated in its entirety, with no additions beyond a non-distinctive element and the legally irrelevant “.co” ccTLD indicator and to sell what appears to be counterfeit goods, as sufficient for the Panel to find that the Respondent was aware of the Complainant and its rights and that the disputed domain name was registered in bad faith.
The use of a domain name in connection with the sale of counterfeit products, as is the circumstances in the present case, is a clear example of use in bad faith, and the Panel has had no difficulty in finding that the Respondent’s use of the disputed domain name constitutes use in bad faith.
The Panel, accordingly, finds that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of 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.
George R. F. Souter
Sole Panelist
Date: November 21, 2016
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