Complainant is Hermès International of Paris, France, represented by Meyer & Partenaires, France.
Respondent is Yuan Waihuang of Xi’an, Shanxi, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and (collectively, the “Domain Names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011. On October 26, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Names. On October 27, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient regarding the word count, Complainant filed an amended Complaint on November 10, 2011.
The Center verified that the Complaint together with the amended 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 November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 5, 2011.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 21, 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
Hermès International SCA (hereafter Complainant) is a French high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods. Complainant has 14 product divisions encompassing leather, scarves, ties, menswear, women's fashion, perfume, watches, stationery, footwear, gloves, enamel, decorative arts, tableware, and jewelry. It has never licensed any of its products and keeps tight control over the design and manufacture of its goods. Complainant is recognized for its handmade luggage and handbag collections. The company does not use assembly lines. Only one craftsperson may work on one handbag at a time, hand-stitching each individual piece.
In 1984, Complainant created the Birkin bag, a handmade purse that is a symbol of wealth by virtue of its price and scarcity. In 1935, Complainant created the Kelly Bag, named after Grace Kelly. In 1958 Complainant created the Constance bag, which was a favorite of Jackie Kennedy Onassis. In 2002, Complainant created the handmade Picotin bag. In 1991 Complainant created the Cape Cod watch whose shape is inspired by a solitary anchor chain link. And Complainant created the high-end Clipper sports watch.
Currently, Complainant’s revenue is around 2,5 billion euros (2010). It markets it products throughout the world (e.g., United States of America, Spain, India, China, Australia, Malaysia, United Kingdom of Great Britain and Northern Ireland) through stores in upscale locations and online through its official website located at (registered in 1997); (registered in 2008); (registered in 2008); (registered in 1996); and (registered in 2006).
In 2009, the Asia-Pasific region generated 43% of the Complainant’s Group’s sales. It delivered revenues of EUR 381 million, rising by 7% at constant exchange rates and by 13% in the retail sector. In 2010, in Asia, sales moved up 19% over the full year. Complainant’s group continued to enlarge its distribution network, with the opening of ten new branches, including four in China. To date, in China, 20 branches/stores are opened, notably in Beijing, Guangdong, Shanghai and Shenzhen.
Complainant owns many registered trademarks within and outside France consisting of or including HERMÈS (the “HERMÈS Mark”). These include: International trademark registration No. 196756 – HERMES (registered November 21, 1956); Chinese trademark registration No. 4933036 – HERMES and carriage (registered May 14, 2009); Chinese trademark registration No. 4932845 – HERMES (registered March 14, 2009); Chinese trademark registration No. 4933050 – HERMES (registered May 14, 2009); French trademark registration No. 1558350 – HERMES (registered July 28, 1989); United States trademark registration No. 2213940 – HERMES (registered December 29, 1998); United States trademark registration No. 1364533 – HERMES and carriage (registered October 8, 1985); and European Community trademark registration No. 008772428 – HERMES (filed December 1, 2009).
Complainant owns the following registrations for BIRKIN (the “BIRKIN Mark”): International trademark registration No. 686529 (registered January 21, 1998) in force in China; and French trademark registration No. 97691016 (registered August 8, 1997).
Complainant owns the following registrations for KELLY (the “KELLY Mark”): French trademark registration No. 1042816 (registered April 15, 2010); Hong Kong trademark registration No. 300101951 (October 28, 2003); and International trademark registration No. 1042816 (registered April 15, 2010).
Complainant also owns the following registrations for: CONSTANCE (the “CONSTANCE Mark”) - French trademark registration No. 3854877 (registered August 26, 2011); for PICOTIN (the “PICOTIN Mark”) - International trademark registration No. 808906 (registered August 12, 2003); and for MONTRE CLIPPER (“the MONTRE CLIPPER Mark”) - International trademark registration No. 655413 (registered June 13, 1996). The HERMÈS, BIRKIN, KELLY, CONSTANCE, PICOTIN and MONTRE CLIPPER Marks collectively will be referred to herein as “the trademarks at issue.”
It is uncontested that Complainant has used continuously all of the aforementioned trademarks in commerce since their registration.
The following Domain Names were registered on July 21, 2011: , , , and .
The following Domain Names were registered on July 22, 2011: , , , , , , , , and .
The following Domain Names were registered on July 23, 2011: , , and .
The following Domain Names were registered on July 24, 2011: , , , , and .
The following Domain Names were registered on July 25, 2011: , , , , , , , and .
The following Domain Names were registered on July 26, 2011: , , and .
The registrar confirmed the contact information of Respondent is in Xi’an Shanxi, China. 5. Parties’ Contentions A. Complainant
The Domain Names are confusingly similar to Complainant’s HERMÈS Mark. The gTLDs “.com” and “.net” are not distinguishing and must be removed from the analysis. Incorporating a trademark in its entirety (here the HERMÈS Mark) may be sufficient to establish that a domain name is identical to complainant’s mark. The Domain Names also include descriptive/generic words: (1) the French words “ceinture”, “foulard” (belt, scarf); (2) the English words “bracelets”, “bangles men”, “bag(s)”, “belts”, “blanket mens”, “shoes”, “handbag(s)”, “watch”, which refer to specific products manufactured and sold by Complainant; (3) the words “gurtel” and “cape cod”, which refer to two of Complainant’s product collections (respectively a bracelet and a watch); and (4) the words “chinapatterns” and “wings”, which respectively refer to the drawings on the Complainant’s tableware and to the main character of its online magazine (a man with a top hat and wings on back). Adding these descriptive words to the HERMÈS Mark does not eliminate the similarity between Complainant’s trademark and the Domain Names rather strengthens it.
The Domain Names and also include the generic word “replica”, which means a “duplicate of a work of art, made by the original artist” or as “a reproduction, a facsimile”. Using that word could not be said to indicate that the Domain Names are not confusingly similar to the HERMÈS Mark. Similarly, adding the term “onlineshop” to the HERMÈS Mark does not distinguish the Domain Name from it. On the contrary, it strengthens the confusion, because customers could believe that the Domain Name would lead them to one of Complainant’s web sites.
Some of the Domain Names also include geographical words like “Australia”, “India”, “bond street” (street name of the Hermès store in London), “Dubai”, “Hamburg”, “London”, “Malaysia”, “NYC”, “USA”, which refer to Hermès store locations. The association of the geographical words with the HERMÈS Mark does not distinguish the Domain Names from the Mark. On the contrary, it strengthens the confusion, because customers could believe that the aforesaid Domain Names would lead them to official websites of Complainant at the various locations.
With regard to the Domain Names: , , , , , and : (1) these Domain Names incorporate Complainant’s HERMÈS, BIRKIN, KELLY, CONSTANCE and PICOTIN Marks in their entirety, which is sufficient to establish confusingly similarity; (2) reproduces the distinctive and prominent part of the MONTRE CLIPPER Mark; (3) the association of the trademarks BIRKIN, KELLY, CONSTANCE, PICOTIN, and CLIPPER with the HERMÈS Mark serves only to confuse Internet users into believing that the websites associated with the Domain Names are offering for sale bags and watches manufactured by Complainant; (4) including the descriptive words “bag” and “price” which refer to one of Complainant’s products and prices for the bags do not distinguish the Domain Names from the HERMÈS and BIRKIN Mark. On the contrary it strengthens the confusion because customers could believe that the Domain Names would lead them to Complanant’s official website; and (5) some of the Domain Names comprise the HERMES and BIRKIN Marks with the word “replica” which does not by itself distinguish the Domain Names.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not currently and has never been known by the words contained in the Domain Names. Also, Complainant has not identified any trademarks / rights owned by Respondent related to Complainant’s marks included in the Domain Names. When Complainant conducted trademark searches “within [the database of the] Intellectual Property Registries in China” it found all of the live trademarks are owned by Complainant. Together with the fact that Complainant operates many stores. Also, Complainant did not know Respondent before it registered the Domain Names, Respondent is not related to its business in any way, or has Complainant licensed or otherwise authorized Respondent to use any of the trademarks at issue here. Respondent has registered thirty-two (32) domain names, all reproducing the trademarks of Complainant with descriptive / generic words, for the sole purpose of disrupting Complainant’s business. Lastly, by using the Domain Names to sell counterfeit Hermès’ goods, this sales activity does not confer on Respondent any rights in the trademarks at issue. Moreover, some Domain Names are used to operate parking web pages displaying hyperlinks that are pointing to other websites, offering similar (and lower quality) products for sale.
Respondent could not ignore Complainant’s existence, its well-known reputation, and its famous trademarks in the field of leather goods, ready-to-wear, lifestyle accessories, perfumery goods, jewelry, when he registered the Domain Names. Registering the Domain Names was not a matter of fortuity. Respondent registered and intended to register the Domain Names to use and adopt Complainant’s well-known trademarks at issue. The additional descriptive / generic words in the Domain Names confirm this. Moreover, the absence of any right or legitimate interest is further evidence of bad faith registration. Respondent has therefore registered the Domain Names for the sole purpose of commercially benefitting from Internet traffic arriving at its websites.
Respondent is using, in the WhoIs details, the following email address: […]@, which imitates another well-known trademark, LOUIS VUITTON, owned by Louis Vuitton Maltier. Respondent has also registered the Domain Name which points to a website selling counterfeit Louis Vuitton goods. This shows Respondent is engaged in registering domain names reproducing or imitating famous trademarks to them in bad faith (for directing Internet users to websites, offering for sale counterfeiting goods), for financial purposes.
The websites connected to the following Domain Names (, , , , , , , , , , , , , , , , , , , , , , and ) advertise that the visitor will be able to find Hermès goods for low prices. These products are counterfeited Hermès branded products. Use of the Domain Names for this purpose disrupts Complainant’s business and is a bad faith use of the Domain Names. These websites also reproduce Complainant’s logo (carriage device) and its combination HERMÈS & carriage device mark. These facts show that Respondent is only interested in the financial gain generated by its websites to the detriment of Complainant.
Moreover, the Domain Names: , , , , , , , and currently point to parked webpages on which several hyperlinks, in French, are displayed to redirect Internet users to websites which offer similar (lower quality) products for sale. Using these Domain Names to resolve to parked webpages providing hyperlinks to websites, offering for sale goods similar to Complainant’s goods (bags, clothes, belts, scarves) for the purpose of deriving profit from pay-per-click revenue is not a good faith use of the Domain Names. A significant proportion of that revenue will be derived from Internet users, hoping to reach Complainant but ending up at Respondent’s sites. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has established its rights in the HERMÈS Mark, as well as the BIRKIN, KELLY, CONSTANCE, PICOTIN and MONTRE CLIPPER Marks, from its long-standing use and trademark registrations for those marks around the world (including China where Respondent has represented to the Registrar it can be contacted). Those rights predate by many years (and in the case of the HERMÈS Mark, many decades) the registration dates of the Domain Names.
“[A] domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, 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. The addition of generic terms to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark. Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253. And including gTLDs such as “.com” and “.net” in the Domain Names does nothing to distinguish the Domain Names from the HERMÈS Mark. Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006.
Each of the thirty-two Domain Names incorporates the HERMÈS Mark in its entirety, together with another of Complainant’s registered marks (e.g., BIRKIN, KELLY, CONSTANCE, PICOTIN) and/or with suffixes that are either country or city names/locations (e.g., “Australia”, “bond street”, “Dubai”, “Hamburg”, “India”, “London”, “Malaysia”, “USA”) or generic words (e.g., “bangles”, “belt men”, “bracelets”, “enamel-bracelet”, “blanket”, “kelly bag”, “mens shoes”, “birkin price”, “cape cod watch”, “china patterns”, “clipper”), none of which serve to distinguish the Domain Names from the HERMÈS Mark in any legally cognizable way. In fact many of the additional words only serve to exacerbate the confusion, for example: (1) where more than one of Complainant’s trademarks are used (e.g., , , ); (2) where the additional word is a geographic term that represents Complainant’s presence around the world (e.g., , , , ); (3) where the word (in English or in French) describes or suggests something about Complainant’s products or identity (e.g., , , , , , , ); or (4) where the word describes aspects of Complainant’s business (e.g., , ). See Prada S.A. v. Artie Johnson, Private,WIPO Case No. D2011-0605.
Similarly, the word “replica” when used alone with the HERMÈS Mark or along with the BIRKIN Mark and other generic terms suggesting Complainant’s products (e.g., , , , , , , , ) does nothing to dispel the confusing similarity inherent in the Domain Names because of the renown of the HERMÈS Mark. “The disputed domain name comprises the Complainant’s HERMES trademark in its entirety with the additional word ‘replicahandbags’. This additional word does not by itself, make the disputed domain name distinctive in character. The disputed domain name, when read as a whole, reads as ‘REPLICAHANDBAGSHERMES.’ The distinctive feature of the disputed domain name remains the HERMES trademark [. . .]”. See Hermes International v. VISA WEN,WIPO Case No. D2010-2265.
The Panel therefore holds that Complainant has established element (i) of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Names. If Complainant makes a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names, the burden shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the Domain Names for purposes of [p]aragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
Complainant alleges that: (1) Respondent is neither related to its business in any way, nor has it licensed or otherwise authorized Respondent to use any of the trademarks at issue; (2) Respondent is not currently known, nor to its knowledge has it ever been known, by the Domain Names (or the HERMÈS, BIRKIN, KELLY, CONSTANCE, PICOTIN or CLIPPER Marks); (3) Respondent is using the confusingly similar Domain Names to disrupt Complainant’s business, to sell counterfeit Hermès goods, and to operate a parked web page with links to other websites offering similar (and lower quality) products for sale. These are not bona fide offerings of goods and are intended for Respondent’s commercial gain.
The Panel holds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the Domain Names, shifting the burden to Respondent to produce evidence to rebut this presumption. See 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). Insofar as Respondent has failed to adduce any contrary evidence, Complainant's facts are sufficient to permit a finding in Complainants' favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has established element (ii) of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Bad Faith Registration
By not submitting a Response, Respondent has failed to invoke any circumstances that could demonstrate it did not register and use the Domain Names in bad faith. Notwithstanding that, the Panel finds that it is highly likely Respondent had actual knowledge of Complainant and its HERMÈS (since 1837), BIRKIN (since 1984), KELLY (since 1935), CONSTANCE (since 1958), PICOTIN (since 2002) and MONTRE CLIPPER (since 1991) Marks when it registered the thirty-two Domain Names each incorporating in its entirety at least Complainant’s HERMÈS Mark.
First, as indicated by the aforementioned parenthetical dates, these Marks have been in long-standing use by Complainant before the Domain Names were registered in July 2011. And they have been in widespread use, including in China, as shown by Complainant. Specifically, the undisputed evidence of record indicates that in 2009, the Asia-Pasific region generated 43% of Complainant’s Group’s sales. In 2010, sales in Asia increased by 19% over the full year and Complainant opened four new branches in China. To date, in China, Complainant has opened 20 branches/stores, notably in Beijing, Guangdong, Shanghai and Shenzhen. See HERMES INTERNATIONAL v. Zhang Feng,WIPO Case No. D2011-1125, finding bad faith registration, reasoning:
“Taking into account the worldwide reputation of the Complainant and its HERMES marks, as well as the market presence of the Complainant and its marks in the Chinese market (evidenced by the registration of the HERMES marks in China and the sale of its luxurious goods [. . .], the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain names.”
And Complainant has had an on-line presence for many years, having registered its domain name in 1997 and its domain name in 2008, for example. Accordingly, Complainant has provided the Panel with solid evidence based on the long-standing and widespread use of the HERMÈS Mark that Respondent likely had actual knowledge of Complainant and the HERMÈS Mark when it registered the Domain Names. This conclusion is further supported by the fact that (as detailed above) Respondent added terms to the thirty-two Domain Names that describe various aspects of Complainant’s business and products (e.g., bracelets, enamel bracelets, mens shoes, London, India), and that are trademarks in Complainant’s own right (e.g., BIRKIN, CONSTANCE, PICOTIN). By doing so, Respondent verified its actual knowledge of Complainant, its business and its well-known trademarks and products at the time it registered the Domain Names. Evidence of Respondent’s knowledge doesn’t stop there.
On the majority of Respondent’s web sites (associated with approximately twenty-four of the Domain Names), Respondent makes ubiquitous use of the HERMÈS Mark along with the BIRKIN, CONSTANCE, PICOTIN, and KELLY MARKS to sell its counterfeit products. Also, it prominently displays the HERMÈS Mark and carriage logo on the first page of these websites. That Respondent knew of Complainant when it registered the Domain Names is additionally reflected on theses websites under a tab titled “Why Hermès”. The text on this page purports to set forth a history of Complainant and the goods it has sold over the years.
The remainder of the Domain Names resolve to various landing pages with sponsored links to businesses that are purporting to sell Hermès brand products at deep discounts (e.g., “Hermes Handbags for Sale”, “Herme Up to 40% off”) and to high-end stores selling competitive products (e.g., “Dolce&Gabbana – Nordstrom”, “Longchamp at M”, “Chanel”, “Saks Fifth Avenue”).
The Panel finds substantial evidence to conclude that Respondent registered the thirty-two Domain Names in bad faith. Bad Faith Use
Respondent is using the Domain Names to sell counterfeit products under the HERMÈS Mark for prices that are much cheaper than the prices for the real products. From the Panel’s own review of Respondent’s websites it is clear that Respondent has gone to great lengths to create sites that Internet users could believe are Complainant’s websites (e.g., prominently using Complainant’s composite HERMÈS Mark and carriage logo, using photographs and descriptions of products that look like Complainant’s products, using photos of high-fashion style models, using a “history” of Complainant under a tab “Why Hermes”). The Panel concludes that by using the confusingly similar Domain Names on associated websites in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant's HERMÈS Mark, as well as the other trademarks at issue, as to the source, sponsorship, affiliation or endorsement of such sites and the products advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films,WIPO Case No. D2006-0893.
The Panel also visited the websites associated with the Domain Names , , , , , , , and
The Panel therefore holds that Complainant has established element (iii) of paragraph 4(a) of the Policy. 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 Domain Names:
, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and
be transferred to the Complainant.
Harrie R. Samaras
Sole Panelist
Dated: December 29, 2011
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