Westmore · UDRP DecisionPhilipp-plein.org
The Panel ordered transfer of <philipp-plein.org>, finding that the domain reproduced the Complainant's PHILIPP PLEIN trademark in its entirety, that the Respondent had not demonstrated rights or legitimate interests, and that the domain was registered and used in bad faith to attract users for commercial gain through confusion with the Complainant's mark.
The timeline behind philipp-plein.org
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The case illustrates a straightforward transfer where a domain wholly incorporated a pre-existing fashion trademark and was allegedly used for counterfeit sales. The decision also demonstrates the importance of an unrebutted prima facie showing: the Respondent's default left no evidence of authorization, commonly known status, bona fide use, or another legitimate explanation.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Philipp Plein v. Whois Privacy Protection Service, Inc. / Apon Yaka Case No. D2014-2027 1. The Parties The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany. The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Apon Yaka of Pattaya, Chonburi, Thailand. 2. The Domain Name and Registrar The disputed domain name <philipp-plein.org> is registered with eNom (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2014. On November 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2014, 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 November 19, 2014 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 November 20, 2014. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2014. The Center appointed Richard Tan as the sole panelist in this matter on January 9, 2015. 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 manufacturer of fashion apparel and goods. It owns trademarks in the mark PHILIPP PLEIN in several countries, including trademarks in the United States of America (Reg. No. 78195112) and a Community Trademark (No. 002966505) for goods in i.a. class 25 (clothing and footwear). The Respondent registered the disputed domain name on March 29, 2014. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical to the Complainant’s trademark in which it has rights. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not registered any trademark corresponding to the disputed domain name or the Complainant’s mark. There is no relationship between the Complainant and the Respondent. The disputed domain name resolves to a website that is being used to sell counterfeit goods. The Complainant contends that the disputed domain name has been registered and used in bad faith by the Respondent. The Respondent has been using the disputed domain for the purpose of selling 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 has been intentionally attempting 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 the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence adduced by the Complainant, this Panel finds that the Complainant has rights in the PHILIPP PLEIN trademark. The PHILIPP PLEIN trademark has been registered in several countries, as mentioned above. This Panel is satisfied that the Complainant has acquired rights in the mark. The Panel further accepts that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. In this Panel’s view, this threshold test is satisfied. The disputed domain name reproduces the PHILIPP PLEIN trademark in its entirety. The addition of the top level domain (“.org”) is insufficient to avoid a finding of confusing similarity as that is a requirement of registration. This Panel accordingly finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests As several UDRP panels have found, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Respondent registered the disputed domain name well after the Complainant established its rights in its PHILIPP PLEIN trademark. The Complainant’s trademark was registered as early as 2002. There is no evidence that the Respondent has been commonly known by the disputed domain name. The Panelaccepts the Complainant’s contention that there is no relationship between the Complainant and the Respondent, that the Respondent has not been granted any license or other rights to use the Complainant’s trademark for any purposes and that the Complainant is not associated or affiliated with the Respondent. The Complainant asserts that the Respondent’s website is being used to sell counterfeit goods. If indeed the Respondent’s website is being used to sell counterfeit goods, such use of the disputed domain name would be contrary to a bona fide offering of goods or services or the Respondent having a legitimate interest in the disputed domain name. The Respondent has not submitted a response to the amended Complaint to rebut the Complainant’s showing and has not demonstrated any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith. The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. On the undisputed evidence, the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark. The disputed domain name was registered well after the Complainant’s trademark was registered and in use. The Panel finds that the Respondent must have had notice of the Complainant’s trademark and business when registering the disputed domain name. The incorporation of the trademark in question in its entirety as part of the disputed domain name is an indication of bad faith. This fact, coupled with the undisputed assertions of the Complainant that the Respondent’s registration and use of the disputed domain name was primarily for the purpose of disrupting the business of the Complainant and that the Respondent’s website is being used, or has been used, to sell counterfeit goods, demonstrates that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark and has acted in bad faith. Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning 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 <philipp-plein.org> be transferred to the Complainant. Richard Tan Sole Panelist Date: January 28, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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