Westmore · UDRP DecisionFashionphilipppleinl.com
The Panel ordered transfer of <fashionphilipppleinl.com>. It found the domain confusingly similar to the Complainant’s PHILIPP PLEIN trademark because the mark remained recognizable despite the addition of “fashion” and a terminal “l”. The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Bad faith registration and use were found under paragraph 4(b)(iv) because the domain resolved to a commercial website apparently offering goods competing with those of the Complainant, thereby exploiting confusion with the mark.
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The decision illustrates that a trademark remains confusingly similar when reproduced in full alongside a descriptive industry term and a minor additional letter. It also shows how use of such a domain for a commercial website apparently offering competing goods can support both the absence of legitimate interests and bad faith under paragraph 4(b)(iv), even where the Panel does not expressly decide a complainant’s counterfeit-goods allegation.
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. Teng Zhang Case No. D2016-0544 1. The Parties The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible IP Law Firm, Germany. The Respondent is Teng Zhang of Shanghai, China. 2. The Domain Name and Registrar The disputed domain name <fashionphilipppleinl.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 March 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2016. The Center appointed Alejandro Garcia as the sole panelist in this matter on April 25, 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 A. The Complainant According to information at the Complainant’s website “www.philipp-plein.com”, the Complainant, Mr. Philipp Plein, is a well-known fashion designer. B. The Complainant’s Trademark The Complainant is owner of several trademarks PHILIPP PLEIN, including for example, the International trademark No. 794860 and the Community trademark 002966505 protecting, among others, goods in class 25 (including clothing and footwear), which predate the registration of the disputed domain name. C. The Complainant’s Domain Name The Complainant has registered the domain name <philipp-plein.com>, which also predates the registration of the disputed domain name. D. The Respondent The Respondent did not participate in these proceedings. The disputed domain name was registered on December 19, 2015. The disputed domain name currently resolves to a web page that sells clothes bearing the PHILIPP PLEIN trademark. The Complainant asserts that the goods offered on the Respondent’s website are counterfeit. 5. Parties’ Contentions A. The Complainant Identical or Confusingly Similar The Complainant argues that the trademark and the disputed domain name contain “identical words”. The Complainant adds that the prefix “fashion” and the letter “l” at the end of the disputed domain name are non-distinctive “and do nothing to distinguish the disputed domain name from PHILIPP PLEIN, which is in fact the only distinctive element within the disputed domain name”. Rights or Legitimate Interests The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not have a relevant registered trademark. The Complainant also states that there is no relationship between him and the Respondent. The Complainant adds that the disputed domain name is being used to sell counterfeit goods. Registered and Used in Bad Faith In this respect, the Complainant argues that because (a) there is no relationship between the Complainant and the Respondent and (b) the Respondent uses the disputed domain name with 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. The Complainant adds that by using the disputed domain name, “the Respondent intentionally attempted 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.” The Complainant seeks the transfer of the disputed domain name. B. The Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established to the Panel’s satisfaction that it has rights in respect of the trademark PHILIPP PLEIN. The dominant part of the disputed domain name is the term “philippplein”. This term is identical to the PHILIPP PLEIN trademark registered by the Complainant. The addition of generic or descriptive terms to the disputed domain name (in this case, “fashion” and an “l” after the term “philippplein”) is insufficient to prevent the existence of confusion with the Complainant’s trademark. The Panel in this regard refers to paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“WIPO Overview 2.0”), which indicates: “The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion […]” Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark PHILIPP PLEIN within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name: “(i) Before any notice […] of the dispute, [the respondent’s] 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) [The respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [The respondent is] 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.” In this case, the Complainant’s (uncontroverted) evidence annexed to the Complaint shows that the disputed domain name has resolved to a website which apparently offers goods that compete with those created and sold by the Complainant. Furthermore, on the basis of the evidence before it, the Panel concludes that the Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not intended to be exhaustive. See, e.g. , Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 . The overriding objective of the Policy is to restrain the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. (See, in this respect, e.g. , Match.com, LP v. Bill Zag and NWLAWS.ORG , WIPO Case No. D2004-0230 ). On the basis of the evidence before it and in particular the fact that the disputed domain name resolved (and continues to resolve) to a website that appears to be offering competing goods according to the Complainant’s (uncontroverted) submissions, the Panel finds that the Respondent has engaged in bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. In turn, on the basis of this finding, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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 <fashionphilipppleinl.com> be transferred to the Complainant. Alejandro Garcia Sole Panelist Date: May 4, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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