FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
I. Request for consolidation against multiple Registrants
(Rules, Paragraphs 3(c), 10(e))
While paragraph 3 of the Rules sets a general provision according to which a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder, paragraph 10(e) of the Rules grants the Panel a general power to consolidate multiple domain names disputes in accordance with the Policy and the Rules. It follows from the above that the UDRP proceedings foresee that under certain conditions, the Panel may decide to consolidate different domain names disputes brought against different Respondents.
In case of multiple Respondents, the Panel identified the following conditions under which the consolidation could be requested:
1. the domain names or the websites to which they resolve are subject to common control; and
2. the consolidation would be fair and equitable to all parties.
When assessing the common control issue, the Panel should take into consideration all the relevant circumstances of the case. In particular, indicia of common control have been found in:
(i) Whois common registration elements, among which, identical Registrar (FragranceX.com, Inc. v. Argosweb Corp a/k/a Oleg Techino and others Case No. D2010-1237) and Hosting Provider.
In the present case, the disputed domain names are registered with the same Registrar, namely Namecheap Inc., and share identical Name Servers .
(ii) The adoption of a common format (Blue Cross and Blue Shield Association, Empire and others v. Private Whois Service and others, Case No. D 2010-1699).
In the present case, both disputed domain names entirely contain the Complainant’s verbal trademark, which is also the name of the famous German stylist Philipp Plein.
(iii) The disputed domain names resolve to identical websites (Sharman License Holdings, Lim., v. Dustin Dorrance and others Case no. D2004-0659; Csa International v. John O. Shannon and others Case no. D2000-0071). It is very significant to note that the Panellist gave a broaden interpretation of the Common Control threshold, often considering sufficient the identity / or substantial identity of the website’s content (i.e. “UDRP panels have found that common control can be exercised in various circumstances, including, where the content of the websites were substantially identical and referred Internet visitors to a common “homepage” Case No. D2012-0821; “The Panel accepts the Complainant’s submission and agrees that the similarities between the two websites in question are sufficient to establish, on the balance of probabilities, that those domain names are in common control” Case No. D2014-1000).
In the present case, the relevant domain names link to identical websites. It is worth noting that the goods offered for sale through the websites, are displayed exactly in the same order, with the same price as well as the same name of the single item. Further, the homepages of both websites contain the same image taken from the Complainant’s official advertising campaign. Finally, both websites refer to the US Company VogueMark Inc., 1221 Broadway, Oakland, CA 94612, United States, as the owner of the websites.
In light of these considerations, it is clear that the disputed domain names are prima facie either owned by the same individual, or are subject to a common control. Hence the Complainant requests the Panel to treat the disputed domain names in a single proceeding. As a matter of fact, it would be quite cumbersome and inequitable for the Complainant to start two separate proceedings in this matter, while the consolidation would be fair and equitable to all parties, in view of the aforesaid common ownership or control. Consolidation would permit to deal in a single proceeding multiple domain name disputes arising from a common nucleus of facts and involving common legal issues. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expenses, and generally fulfills the fundamental goals of the Policy.
II. The Complainant
The Complainant is the German fashion designer Philipp Plein, founder of the eponymous brand. Currently, Philipp Plein is universally recognized as a leading brand in the luxury fashion industry (for more information on the Complainant’s activities, please visit www.world.philipp-plein.com).
The Complainant participates to the most important fashion shows around the world (Milan, Paris, New York, among others) and its advertising campaigns are universally renowned to be unique and very impacting.
The market has applauded the Complainant’s fashion collections, and the world of PHILIPP PLEIN is enjoying a phenomenal success today with showrooms all over the world: more than 36 mono-brand stores, over 500 retail clients worldwide. Philipp Plein runs at a double digit rate of expansion, and currently has a turnover of over one hundred million Euro.
According to Franca Sozzani, historic editor in Chief of Vogue Italia, ”Philipp Plein is unique because he has a joy of life. He doesn’t want to be a fashionista, he makes fashion because he loves women. This is a specific, special attitude because he is one of the few”.
Philipp Plein has concluded several sponsorship agreements, with among others, AS Roma (one of the most important Italian soccer teams), Mauro Icardi, (Inter’s Milan striker) and Nico Hulkenberg, the Formula one racer.
Due to its longstanding use, and the huge promotional and advertising investments, the PHILIPP PLEIN trademark is certainly well-known. The Complainant is very active in the defense of its IP Rights, against domain names abusive registrations. Among the several UDRP Decisions, the Complainant cites the following Case No. D2017-1413 which recognized that the trademark "Philipp Plein" is well-known ("The disputed domain name is confusingly similar to the Complainant's trademark and the website at the disputed domain name displays the Complainant's well-known trademarks and offers the Complainant's and competing products for sale").
The Complainant is also active on several social networks, such as Facebook, Twitter and Instagram.
III. The Respondents
The disputed domain names were registered on March 4, 2017 and November 21, 2017. Both domain names link to the same website, which offers for sale alleged Philipp Plein items and display the Philipp Plein trademark in a prominent position. The disputed domain names’ contact details were originally shielded by a privacy protection service. Following the filing of the UDRP Complaint, the relevant contact details have been disclosed as follows:
(i) philipppleineoutlet.com
Registrant Name: wei zhang
Registrant Organization:
Registrant Street: wangu fengtin NO.75
Registrant City: HUA
Registrant State/Province: henan
Registrant Postal Code: 456473
Registrant Country: CN
Registrant Phone: +86.15294655010
Registrant Email: YvetteLevasseur990@outlook.com
(ii) philippplein.site
Registrant Name: John Smith
Registrant Organization: TY
Registrant Street: tree as tree street. 48
Registrant City: Slough
Registrant State/Province: Florida
Registrant Postal Code: 33542
Registrant Country: US
Registrant Phone: +1.15825633666
Registrant Fax: +1.15825633666
Registrant Email: lyfhzfrom2012@gmail.com
IV. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights
Among the various Philipp Plein formative trademarks, the Complainant is the owner of the following:
(i) PP (device), US Registration No. 4181456, filed on October 5, 2011 and registered on July 31, 2012, for goods in classes 3, 14, 18, 20, 21, 24, 25 and 28.
(ii) Philipp Plein, US Registration No. 4918695, filed on March 3, 2014 and registered on March 15, 2016, for goods in classes 3, 14, 21, 24 and 28.
(iii) Philipp Plein, EU Registration No. 002966505, filed on December 6, 2002 and registered on January 21, 2005, for goods in classes 3, 14, 18, 20, 21, 24, 25 and 28.
(iv) PP Philipp Plein (device), EU Registration No. 012259503, filed on October 28, 2013 and registered on March 24, 2014, for goods in classes 3, 14, 18, 20, 21, 24, 25, 28.
The mere fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy (see Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). In the present case, the disputed domain names contain entirely the Complainant's trademark, and, in light of the Panelist Consensus view, this fact is sufficient to conclude that the first requirement under the Policy is met.
Furthermore, the addition of generic and descriptive words, such as "outlet”, rather than excluding a similarity with the earlier well-known Philipp Plein trademark, increases the likelihood of confusion, since this word could be easily linked to the Complainant’s business. It is clear that the combination between the well-known Philipp Plein mark and outlet, gives the idea that the disputed domain name <philipppleineoutlet.com> is an on-line point of sale of discounted Philipp Plein’s items.
Finally, the addition of a gTLD such as ".com" or “.site” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
Therefore, the disputed domain names are confusingly similar to the earlier Philipp Plein well-known trademarks, and the first requirement under paragraph 4 (a)(i) of the Policy and of paragraph 3(b), (viii), (b)(ix)(1) of the Rules is satisfied.
V. The Respondent has no rights or legitimate interests in respect of the domain name.
According to paragraph 4(a) of the Policy, the burden of proving the absence of the Respondent’s rights or legitimate interests in respect of the Domain Name lies with the Complainant. It is nevertheless a well-settled principle that satisfying this burden is unduly onerous, since proving a negative fact is logically less feasible than establishing a positive. Accordingly, it is sufficient for Complainant to produce a prima facie evidence in order to shift the burden of production to Respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003.
In the present case, the Complainant denies that Wei Zhang and John Smith, are authorized dealers, agents, distributors, wholesalers or retailers of Philipp Plein. In fact, the Complainant has never authorized the above mentioned subjects to include its well-known trademark in the disputed domain names, nor to make any other use of its trademark in any manner whatsoever. Complainant also confirms that it is not in possession of, nor aware of the existence of, any evidence tending to demonstrate that these subjects are commonly known by the domain names, as individual, business, or other organization.
Moreover, to the best knowledge of the Complainant, neither Wei Zhang nor John Smith, own Philipp Plein formative trademarks, which would grant rights on the disputed domain names.
In light of these considerations, the Complainant excludes that the Respondent is commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy.
Currently, the disputed domain names link to identical websites which offers for sale alleged Philipp Plein goods using the original names of the relevant garments, and featuring, without any authorization, the Complainant's figurative trademark / verbal trademarks, in a prominent position. Furthermore, it is significant to note, that the Respondent is using, without authorization, images of Philipp Plein’s original advertising campaigns, and this amounts to a copyright violation of the Complainant.
It is clear that the Respondent is using the disputed domain names to promote his websites as official online point of sales of the Complainant, offering for sale discounted "alleged" Philipp Plein goods, and this use certainly does not amount to a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue” as provided for by paragraph 4(c)(iii) of the Policy, neither to “a bona fide offering of goods or services” as provided for by paragraph 4(c)(i) (see, among others, Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572 (consolidated with other 10 precedents); Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058; Cartier International, N.V. , Cartier International, B.V. v. David Lee, Caso WIPO Case No. D2009-1758, etc.).
For all reasons mentioned above the Complainant deems to have sufficiently proved that the Respondent lacks rights and legitimate interests in respect of all the Domain Name.
VI. The domain names were registered and are being used in bad faith.
In accordance with paragraph 4(a)(iii) of the Policy in order to succeed in a UDRP Proceeding, the Complainant must prove, as a third and last requirement, that the Respondent registered and used the disputed domain names in bad faith.
As far as registration in bad faith is concerned, the disputed registered domain names contain a well-known third party’s trademark with no authorization, as well as the name of the famous German stylist, Mr. PHILIPP PLEIN. The Respondent could not ignore the existence of the Philipp Plein trademark at the time of the registration of the disputed domain names, not only because Philipp Plein is a very well-known trademark, but in consideration of the nature of the domain names (the first one composed by the Complainant's trademark plus the addition of the generic term "outlet" and the second one entirely composed by the Complainant’s trademark) and of the website’ contents, which reproduce the Complainant’s trademark, and the names of the official Philipp Plein's garments.
Furthermore, the disputed domain names have been registered long after the filing/registration of the Complainant’ relevant trademarks.
As far as use in bad faith is concerned, we note that the disputed domain names link to a website offering for sale alleged “Philipp Plein” goods, and unduly depicting copyrighted pictures taken from the Complainant’s official website. The websites also feature the Complainant’s figurative and verbal trademarks, used in connection with the goods offered for sale.
This kind of use is certainly not a use in good faith. It may cause substantial damages not only to the Complainant, but also to consumers. On the one side, the Complainant’s image and reputation are strongly affected by the websites, very similar to the official one, offering for sale goods likely counterfeit. On the other side, consumers share confidential information when they pay the purchased goods, with the concrete risk that this information is stolen and used fraudulently by the Respondent.
It appears from the above that the disputed domain names have been registered and are used to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s official website, also creating the impression that the Respondent’s websites are sponsored/affiliated or endorsed by the Complainant.
In view of the above, the Complainant deems to have sufficiently proved that the disputed domain names were registered and have been used in bad faith, according to the third and last requirement of the Policy.
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