Westmore · UDRP DecisionPlein-philipp.org
The Panel ordered transfer of <plein-philipp.org>. It found the reversed ordering of the two words in the PHILIPP PLEIN mark did not avoid confusing similarity. The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which went unanswered. Based on the website's use of the mark, similar imagery, clothing sales, the serious and unchallenged allegation of counterfeit sales, and the Respondent's failure to demonstrate good-faith conduct, the Panel found registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
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The decision illustrates that reversing the order of the words in a two-word trademark will not necessarily avoid confusing similarity, particularly where the domain still reproduces the entire mark. It also shows how trademark use, similar website imagery, and sales in the trademark owner's product sector can support a prima facie case on legitimate interests and a paragraph 4(b)(iv) bad-faith finding when the respondent offers no 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. Apinya Khamket Case No. D2015-0936 1. The Parties The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany. The Respondent is Apinya Khamket of Chonburi, Thailand. 2. The Domain Name and Registrar The Disputed Domain Name <plein-philipp.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2015. The Center appointed Charné Le Roux as the sole panelist in this matter on July 23, 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 an individual trading under the name and style of PHILIPP PLEIN. He is the owner of the domain name <philipp-plein.com> which he registered on March 18, 1999. The Complainant’s PHILIPP PLEIN clothing, shoes and accessories are sold from the website associated with this domain name. The Complainant is also the owner of registered trade marks for PHILIPP PLEIN, including an International trade mark with registration date December 13, 2002 (no. 794860) and a Community Trade Mark registration filed on December 6, 2002 (no. 002966505). Both registrations cover a broad range of goods in classes 3, 14, 18, 20, 21, 24, 25 and 28. The Disputed Domain Name was registered on April 1, 2015 and resolves to a website that features the trade mark PHILIPP PLEIN and through which clothing items are promoted and sold. 5. Parties’ Contentions A. Complainant The Complainant submits that he has acquired rights in his PHILIPP PLEIN trade mark by virtue of: a. International and Community Trade Mark registrations obtained for the PHILIPP PLEIN trade mark; and b. his use of the PHILIPP PLEIN trade mark in relation to clothing, shoes and accessories. The Complainant argues that the Disputed Domain Name is identical and/or confusingly similar to his registered trade mark, in that the Disputed Domain Name incorporates the two words that make up the PHILIPP PLEIN trade mark, albeit in the reverse order. The Complainant refers to a previous UDRP panel decision concerning a very similar domain name and against the same respondent as is the case here. See Philipp Plein v. Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Apinya Khamket, WIPO Case No. D2015-0072 . The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that: a. the Respondent does not own a registered trade mark for PHILIPP PLEIN; b. there is no relationship between the Complainant and the Respondent; c. the Respondent registered the Disputed Domain Name long after the Complainant’s trade mark was registered; and d. the Disputed Domain Name is being used to sell counterfeit goods. The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. He argues that the Respondent’s use of the Disputed Domain Name for the purpose of selling counterfeit goods demonstrates that the registration of the Disputed Domain Name was mainly with the intention of interrupting the business of the Complainant. The Complainant also submits that the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark and goods. The Complainant requests that the Disputed Domain Name be transferred to him. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities: (i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which he has rights; (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 The Panel finds that the Complainant has established rights in the trade mark PHILIPP PLEIN following him obtaining Community Trade Mark and International trade mark registrations for the mark, his registration of the domain name <philipp-plein.com> and also his associated use of this trade mark. The Disputed Domain Name incorporates the two elements of the trade mark PHILIPP PLEIN, in reverse order. This does not distinguish the Disputed Domain Name from the Complainant’s trade mark and accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights. See also Philipp Plein v. Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Apinya Khamket , WIPO Case No. D2015-0072 in connection with the domain name <plein-philipp.com>. The Complainant has satisfied this Policy requirement. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. This is accomplished as follows: “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence with the burden of proof always remaining on the complainant.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 2.1 in this regard. The facts of this matter are that the Respondent registered the Disputed Domain Name in April 2015. At that time, the Complainant owned registered trade marks for PHILIPP PLEIN and had been operational on the website associated with his domain name <philipp-plein.com>. The website associated with the Disputed Domain Name includes imagery very similar to the Complainant’s website and also the Complainant’s trade mark PHILIPP PLEIN. The said website also promotes the sale of clothing, identified under descriptions such as “Sweat Philipp Plein Terrorist Panda” and “T-shirt Cowboy Philipp Plein”. The Complainant asserts that there is no relationship between the Complainant and the Respondent and in fact, that the Respondent uses the Disputed Domain Name to sell counterfeit goods. The Panel finds that the Complainant has made out a prima facie case in terms of paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer. However, the Respondent has not filed any answer or come forward with circumstances which indicate that it does have a right or a legitimate interest in the Disputed Domain Name. The Complainant’s contentions therefore stand unchallenged. Accordingly, the Panel finds that the Complainant has succeeded in meeting the burden of proof under this Policy requirement. C. Registered and Used in Bad Faith The Complainant contends that the Respondent’s use and registration of the Disputed Domain Name was in bad faith, since the website associated with the Disputed Domain Name is used to sell counterfeit goods, demonstrating the Respondent’s intention to lead Internet users to believe that there is an affiliation between the Complainant and the website. The assertion made by the Complainant in connection with the sale of counterfeit goods from the website associated with the Disputed Domain Name is serious. The Respondent’s failure in this proceeding to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, leaves the Panel with no doubt that the Disputed Domain Name was registered and is being used in bad faith. The Panel finds on the record in this case that the Complainant has proven this last Policy requirement, within the meaning of paragraph 4(b)(iv) 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 <plein-philipp.org> be transferred to the Complainant. Charné Le Roux Sole Panelist Date: August 4, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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