NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
PARTIES' CONTENTIONS:
The Complainant’s contentions can be summarised as follows:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
It is a well-established principle that when a domain name wholly incorporates the Complainant's registered mark, the first requirement under the UDRP shall be considered accomplished (see Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. 2005- 1249 and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). In the present case, the disputed domain name entirely contains the Complainant’s trademark PHILIPP PLEIN.
Further, the addition of the new gTLD such as ".club" 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 name is confusingly similar to the earlier Plein / Philipp Plein well-known trademarks, and the first requirement under para. 4 (a)(i) of the Policy and of para. 3(b), (viii), (b)(ix)(1) of the Rules is satisfied.
The Respondent has no rights or legitimate interests in respect of the disputed 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 the 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.
The Complainant denies that the Respondent has any right or legitimate interest in registering the disputed domain name. As a matter of fact, neither Leno Trade Company nor Tan Smith are Complainant’s dealers, agents, distributors, wholesalers or retailers and have never been authorized to register Philipp Plein and Plein as a domain name. Furthermore, the Respondent is not commonly known as “PHILIPP-PLEIN.CLUB”, as Philipp Plein is the Complainant’s name and is registered as a trademark while the Respondent name is Tim Smith and Leno Trade Company.
Additionally, the Respondent does not own “philipp plein” or “plein” formative trademarks which could grant him rights on the disputed domain name and is not commonly known by the disputed domain name under Art. 4(c)(ii) of the Policy.
Currently, the disputed domain name is used to offer for sale alleged Philipp Plein’s clothing, footwear and other items. Considering the prices, it is very probable that the items offered for sale on <philipp-plein.club> are counterfeit. Original Philipp Plein’s t-shirt cost more than 300,00 Euro, as you see on www.plein.com, much more than the 40,00-50,00 Euro of the items offered for sale through the disputed domain name.
As said above, the website to which the disputed domain name redirects display in a prominent position the Philipp Plein wordmark and figurative mark as well as original images of Philipp Plein’s past and actual advertising campaigns. These circumstances increase the likelihood of confusion for the relevant consumer and are a clear violation of the Complainant’s copyright.
It is clear that the Respondent is using the disputed domain name to promote his website as an official e-commerce platform owned, directly or indirectly, by the Complainant. Thus, the Respondent is taking unfair advantage of the distinctive character and reputation of the Complainant’s trademark and unduly seeking to profit from the Complainant's goodwill for its own financial gain.
The Respondent does not have rights or legitimate interests in the disputed domain name.
The domain name was registered and is 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 name in bad faith.
As far as registration in bad faith is concerned, the Respondent registered a domain name containing a well-known third party’s trademark without any sort of authorization. The Respondent could not ignore the existence of the PHILIPP PLEIN trademark at the time of the registration of the disputed domain name, not only because PHILIPP PLEIN is a well-known trademark, but also in consideration of the nature of the domain name and of the websites’ contents.
The disputed domain name links to a website offering for sale alleged “Philipp Plein” items, and unduly depicting copyright pictures taken from the Complainant’s official website. The website also features the Complainant’s figurative logo and verbal trademarks, in connection with conflicting goods. It appears from the above that the disputed domain name has been registered and is used to intentionally attract for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s official website, also creating the impression that the Respondent’s website is sponsored/affiliated or endorsed by the Complainant.
In addition, the disputed domain name is identical to the Complainant’s trademarks. Generally, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.
In view of the above, Complainant respectfully submits that the Domain Name was registered and is being used in bad faith in full satisfaction of paragraphs 4(a)(iii) and 4(b) (iv) of the Policy.
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