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WIPO-UDRP Entscheid
D2013-1356

Fallnummer
D2013-1356
Kläger
Philipp Plein
Beklagter
Angelo, fujian putian.org, I.C.S. Trabia-Network S.R.L.
Entscheider
Palazzi, Pablo A.
Betroffene Domain(s)
Status
Geschlossen
Entscheidung
Transfer
Entscheidungsdatum
24.09.2013

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philipp Plein v. Angelo, I.C.S. Trabia-Network S.R.L. and Domain Admin – PrivacyProtect.org

Case No. D2013-1356

1. The Parties

The Complainant is Philipp Plein of Amriswil, Switzerland, represented by LermerRaible.com, Germany.

The Respondent is Angelo of Fujian, China, I.C.S. Trabia-Network S.R.L. of Chisinau, Republic of Moldova and Domain Admin – PrivacyProtect.org of Nobby Beach, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <philippplein.biz> 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 July 30, 2013. On July 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2013, 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 the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 5, 2013, 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 amendment to the Complaint on August 6, 2013.

The Center verified that the Complaint together with the amendment to 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 August 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2013.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 10, 2013. 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.

On September 19, 2013, the Panel issued Procedural Order No. 1 requesting the Complainant to provide a more detailed description of the activities and use of the trademarks. The Complainant submitted a detailed description on September 20, 2013. The Respondent did not submit any response to the Complainant’s submission.

4. Factual Background

According to the Complaint, Mr. Philipp Plein runs a successful and well-known fashion business. The original luxury business was founded in 1998 and the fashion business in 2004. The Complainant has opened more than 21 fashion stores located in jurisdictions like Marbella, Baku, Milan, Macau, Seoul, Saint Petersburg, Dubai, Amsterdam and Berlin.

The disputed domain name was registered May 14, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of several trademarks for PHILIPP PLEIN including registrations in the United States of America (trademark no. 78195112), the European Union (CTM 002966505) and international trademark registration no. 794860 with designation in several countries. Registrations were filed for goods in class 25 (clothing, footwear).

The Complainant states that the disputed domain name was registered by the Respondent to sell counterfeit “PHILIPP PLEIN” products.

The Complainant is the owner of the companies “Philipp Plein AG” and “Cream della Cream Switzerland GmbH”, both incorporated in Switzerland. Through his companies the Complainant is also selling his clothes online, e.g. via the main page located at “www.philipp-plein.com”. These online shops were more or less copied by the Respondent.

The Complainant states that the trademarks and the disputed domain name are identical. The goods offered by the Respondent under the disputed domain name are identical to the goods protected by the trademarks of the Complainant.

The Complainant states that the Respondent has neither rights nor legitimate interests in respect of the disputed domain name. There is no relationship between the Complainant and the Respondent.

The Complainant states that the disputed domain name is being used to sell counterfeit goods. In support of these contentions, Complainant provides printouts of the webpage featured at the disputed domain name as Annex 5.

The disputed domain name was registered on May 4, 2013, long after the trademarks were registered.

Finally with respect to bad faith, the Complainant states that the Respondent registered 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. In addition, the Complainant states that by using the 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 trademark and the Complainant’s goods.

The Complainant requests as a remedy the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to a mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the 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 trademark rights in PHILIPP PLEIN as evidenced by the trademark registrations mentioned in the Complaint.

The Panel is also prepared to find that the disputed domain name <philippplein.biz> is confusingly similar to the Complainant’s trademark PHILIPP PLEIN.

The addition of the generic top-level domain suffix “.biz” does not change this finding. This element is insufficient to distinguish the disputed domain name from the Complainant’s trademark .

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, the use by the respondent 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 customers or to tarnish the trademark or service mark at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. The Complainant has prior rights in the trademark which precede the Respondent's registration of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), section 2.1.

The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the domain name is used in connection with a bona fide offering of goods or services, or that it has, for any other reason, rights of legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which the Policy states that “shall be [accepted by the Panel as] evidence of the registration and use of a domain name in bad faith” for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.

The Complainant has demonstrated that the Respondent registered and is using the disputed domain name in bad faith.

As noted above, the Complainant stated that through his companies he is selling his clothes online via the website located at “www.philipp-plein.com” and that this online shop was copied by the Respondent. According to the Complaint, at the time of filing the Complaint, the disputed domain name was being used to sell allegedly counterfeit goods. In support of these contentions, the Complainant provides printouts of the webpage featured at the disputed domain name as Annex 5 to the Complaint. The Respondent has not denied these assertions. The Panel further notes that said webpage does not disclose the Respondent’s relationship with the Complainant.

It is the view of the Panel that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of the Respondent’s website.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met.

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 <philippplein.biz> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: September 24, 2013