Complainant is Hermès International of Paris, France represented by Meyer & Partenaires, France.
Respondent is Hermes-B of guangdongsheng, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2011. On March 21, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On March 22, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on May 6, 2011. 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. Complainant
Complainant, Hermès International, is a company incorporated in Paris, France. It a French high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods.
Complainant is the registered owner of numerous trademarks consisting or including the wording “hermès” throughout the world. For example, Hermès was registered as an international nominative trademark on November 21, 1956 (see Annex E11 to the Complaint), registered as nominative trademark in France on October 16, 1979, (see Annex E1 to the Complaint) and registered as nominative trademark in China on October 8, 2005 (see Annexes E5 and E6 to the Complaint). Complainant is also the registered owner of numerous trademarks consisting or including the wording “birkin” throughout the world. For example, BIRKIN was registered as an international nominative trademark (notably in force in China) on January 21, 1998 (see Annex E12 to the Complaint), registered as nominative trademark in France on August 8, 1997 (see Annex E13 to the Complaint). B. Respondent
The disputed domain name was registered on December 25, 2010. 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
The gTLD “.net” is not of distinguishing effect and must be removed from analysis. The inclusion of the top-level domain extension does not give any distinctive character to the domain name. The disputed domain name is wholly reproducing letter-by-letter Complainant’s HERMÈS and BIRKIN trademarks. The association of the trade mark HERMÈS (corporate trademark) and BIRKIN (product trademark) intends only to confuse the Internet users, which would obviously believe that the website associated with disputed domain name combining these two trademarks is offering for sale the bags Birkin manufactured by HERMÈS. The addition of the final letter “s” to the mark BIRKIN (which constitutes the plural form of “BIRKINS”) and a dash between the marks do not eliminate the identity or at least the similarity between Complainant’ s registered and well-known trademarks and the disputed domain name. The whole reproduction of well-known trademarks, as the HERMÈS and BIRKIN trademarks, is per se generating a likelihood of confusion.
(b). Respondent has no rights or legitimate interests in respect of the disputed domain name;
Respondent is not currently and had never been known under the wordings Hermès, Birkin/Birkins, or Hermèsbirkin. Complainant notably conducted a trade trademarks search in the Chinese IP Registry over the names “hermès” and “birkin”. This inquiry conducted to about 70 live trademarks, all belonging to Complainant.
Complainant claimed that it did not know Respondent before it registered the disputed domain name . Complainant reminds that its luxurious goods are sold throughout the world, including in China, through self-owned stores exclusively.
Complainant has never given any authorization or permission to Respondent to register or to use the disputed domain name.
(c). The disputed domain name was registered and is being used in bad faith.
(c.1). Registration in bad faith
HERMÈS has previously demonstrated the strong reputation and the well-known character of its marks HERMÈS and BIRKIN throughout the world, including in China, where Respondent is apparently located, for a long time.
Respondent could not ignore the existence of Complainant, its well-known reputation and its famous trademarks when it filed application for the registration of the disputed domain name.
The mere absence of right or legitimate interest in respect of disputed domain name should point out that the disputed domain name has not been registered in good faith.
(c.2). Use in bad faith
The disputed domain name is currently inactive.
Complainant suspects that Respondent registered the disputed domain name for the sole purpose of creating a website for offering for sale counterfeiting Hermès goods.
Even if Respondent has not intended to activate a fraudulent website, Complainant considers that Respondent’s passive use of the disputed domain name may be deemed a bad faith behavior.
The passive use held by Respondent must be considered bad faith in the present case.
In this case, the passive holding of the disputed domain name is firstly harmful to Complainant’s brand image. Consumers may be confused, if they are looking for Hermès, Birkins bags.
Respondent has provided not evidence or whatsoever of any actual or contemplating good faith use of the disputed domain name.
The registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Complainant already faced counterfeiting attempts. Therefore, it has to prevent a new fake of its website and to protect in the meantime its clients from counterfeiting acts.
Respondent‘s passive holding of the disputed domain name should be considered as an use in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The disputed domain name is registered in Latin characters and particularly in English language;
(b) The terms “hermès” and “birkins” refer to Complainant’s company Hermes, which is a French company;
(c) The email address associated to the disputed domain name is in Latin characters and particularly in English language;
(d) The use of English would not prejudice Respondent’s ability to defend itself in these proceedings.
(e) Complainant is not able to communicate in Chinese;
(f) A proceedings conducted in Chinese would be consequently unduly delayed and Complainant would have to incur substantial expenses for translation.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0.”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that the Complainant is a French company, and the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain name include Latin characters “hermes” and “birkins” and the Respondent’s email address […]@hermes-b includes Latin characters and English word “service” (See also Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the wordings “hermès” and “birkins” refer to Complainant’s company Hermès, which is a French company; (c) Respondent’s email address […]@hermes-b includes Latin characters and English word; (d) the website appears to have been directed to users worldwide rather than solely Chinese speakers; (e) the Center has notified Respondent of the proceedings in both Chinese and English; and (f) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the trademarks HERMÈS and BIRKIN (the “Trade Marks”) acquired through registration. The Trade Marks have been registered worldwide including in China, and it has a widespread reputation in high fashion industry, particularly the specializing in leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods.
The disputed domain name comprises the Trade Marks in their entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the final letter “s” to the mark BIRKIN (which constitutes the plural form of “BIRKINS”) and a dash between the marks. This does not seem to eliminate the identity or at least the similarity between the Complainants’ registered and well-known trademarks and the disputed domain name.
Previous WIPO UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065). In a previous case involving Complainant’s parent company in respect of the domain name , the panel found similarly that the addition of the word “china” to the word “loreal” does not serve to distinguish it from Complainant’s L’OREAL marks (L’Oreal v. Liao quanyong,WIPO Case No. D2007-1552).
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the Trade Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that the Respondent has commonly been known by the disputed domain name; and
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview, paragraph 2.1 and cases cited therein)
Complainant has rights in the HERMÈS Trade Mark (international registration since 1956 - see Annex E11 to the Complaint; Chinese registration since 2005 - see Annexes E5 and E6 to the Complaint) and in the BIRKIN Trade Mark (an international nominative trademark, notably in force in China since 1998 - see Annex E12 to the Complaint) which precede the Respondents’ registrations of the disputed domain name (in 2010).
According to Complainant, Complainant is a French high fashion house established in 1837. Hermès stores are located worldwide in upscale location. The world Hermès flagship boutiques are in Tokyo and Shanghai. To date, in China, 16 branches/stores are opened, notably in Beijing, Canton, Shanghai and Shenzhen (see Annex C1 to the Complaint). Moreover, according to Complainant, Respondent is not authorized dealers of HERMES/BIRKIN branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “hermes” and “birkin” in its business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the Trade Marks or to apply for or use any domain name incorporating the Trade Marks HERMES and BIRKIN;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on December 25, 2010. The disputed domain name is identical or confusingly similar to Complainant’s Trade Marks HERMES and BIRKIN.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith. a). Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the Trade Marks with regard to its products. Complainant has registered its HERMES and BIRKIN trademarks worldwide, including registration in China since 2005 and 1998 respectively. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the Trade Marks not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s HERMES and BIRKIN branded products. b). Used in Bad Faith
Based on the information provided by Complainant, the disputed domain name is currently inactive. In terms of inactive domain name, the Overview 2.0 noted: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”(Paragraph 3.2.) The Overview 2.0 further stated: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Based on information provided by Complainant, Complainant is a French high fashion house established in 1837, and its stores are located worldwide in upscale location (as introduced above). Complainant registered HERMÈS as its international Trade Mark in 1956, and registered BIRKIN as international nominative trademark in 1998. Moreover, Complainant notably conducted trademarks search in the Chinese IP Registry over the names “hermes” and “birkin”. According to Complainant, this inquiry conducted to about 70 live trademarks, all belonging to Complainant. Therefore, the Complainant’s HERMÈS and BIRKIN trademarks, arguably, are widely known trademarks. Further, based on the information provided by the Center, no response to the Complaint has been filed by Respondent. Therefore, the inactive disputed domain name has arguably been used in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: May 31, 2011
Full & Egal Universal Law Academy