The Complainant is Hermès International of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Zhangwei of China. 2. The Domain Name and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , are registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2011. On November 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 9, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 10, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent of the Complaint, and the proceedings commenced on November 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2011.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 16, 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. Language of proceedings
As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
As such, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. As stated by previous UDRP panels, the panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matter such as command of the language, time and costs. It is important that the language finally decided by the panel for the proceeding is not prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. See, Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.
In the present case:
- The Complaint had been submitted in English and following the Language of Proceedings Notification of the Center, the Complainant filed a request that the language of the proceedings be English arguing inter alia that (a) the disputed domain names are registered in Latin characters and particularly in English language, (b) the websites operated under the disputed domain names are in English only, which means that the Respondent is fluent in English, at least to make business, (c) there is no registration agreement provided on the website of the registrar, (d) the Complainant is not able to communicate in Chinese therefore selecting the Chinese language would unduly delay the proceedings and would moreover compel the Complainant to incur substantial expenses for translation,
- The Respondent did not answer to the Language of Proceedings Notification of the Center.
According to the Rules, paragraph 11 (a) and (b), based on the circumstances of this case, the Panel finds that the language of the proceeding should be English for the following reasons:
- The Complainant requested for English to be the language of the administrative proceedings,
- The Center sent all the communications in both languages, Chinese and English,
- It should also be noted that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language. In the present case it could be inferred from the documents submitted by the Complainant that the Respondent is familiar with the English language since the websites operated under the disputed domain names are in English language. On the other hand, the Complainant is not able to communicate in Chinese language, nor is the English language native language for either party (see in this respect Fissler GmbH v. Chin Jang Ho,WIPO Case No. D2008-1002). Due process:
Where, as in this case, a respondent does not submit a response, the rules of due process require the Panel to verify, to the extent possible, that the Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documentation, that this is the case.
Based on the methods employed to provide the Respondent with notice of the Complaint, and the Respondent’s obligation under the Registration Agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
In this respect it should also be emphasized that the Center must attempt reasonably to contact the Respondent, but can do no better than to send communications to the email and physical address on official record or provided in the Complaint. It is noted that the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. In the present case the Complaint and associated communications were sent to the physical and emails addresses available in the WhoIs data base and provided by the Registrar. The Panel is satisfied that the Center has exercised the utmost care and has fulfilled its obligations under paragraph 2 of the Rules. See also Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten,WIPO Case No. D2008-0463.
The Panel therefore assumes that the Respondent has received the Complaint and is aware of the proceedings, but has chosen not to respond (See, e.g. Pizza Hut International, LLC v. Kim Beom Sung,WIPO Case No. DRO2002-0003). 4. Factual Background
The Complainant in the present proceedings is Hermes International, a partnership limited by shares company registered under the laws of France. The Complainant registered the trademarks HERMES, BIRKIN, CONSTANCE and LINDY in various countries.
The Complainant is a French high fashion house established in 1837, specialized in leather, ready-to wear, lifestyle accessories, perfumery and luxury goods. Its logo is of a carriage device.
The Respondent in this administrative proceeding is Zhangwei of China and the disputed domain names were registered on June 21, 2011, June 22, 2011, June 23, 2011 or June 24, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that it holds rights in the trademarks HERMES, BIRKIN, CONSTANCE and LINDY and the disputed domain names are confusingly similar to its previous famous trademarks.
Also, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not currently and has never been known under the wordings contained in the disputed domain names and notably the terms Birkin, Hermes, Constance and Lindy. Also, the Complainant contends that the Respondent is not, in anyway, related to its business, is not one of its agents and does not carry out any activity for or has any business with it. The Complainant contends that it has not licensed or otherwise authorized the Respondent in anyway. The Complainant argues that the Respondent has registered twenty (20) domain names, all reproducing the trademarks of the Complainant with descriptive/generic words, for the sole purpose of disrupting the Complainant’s business on its profit. Also, the Complainant shows that the fact that the Respondent is using some disputed domain names to sell counterfeiting Hermes goods clearly shows the absence of rights or legitimate interests. The Respondent was not expressly authorized or permitted to use the trademarks as a basis for the domain names and its use of the disputed domain names does not meet the four requirements to be in connection with a bona fide offering of goods.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. As such, the Complainant argues that given the strong reputation and the widely known character of its trademarks HERMES, BIRKIN, CONSTANCE and LINDY through the world, the Respondent could not ignore the existence of the Complainant, its well-known reputation and its famous trademarks when he filed application for the disputed domain names. The Complainant also argues that the Respondent registered the disputed domain names for the sole purpose of commercially benefiting from Internet traffic arriving at its websites. In addition, the Complainant contends that the disputed domain names are used by the Respondent to offer counterfeiting HERMES branded products for sale, which are considerably cheaper than the original Hermes products of the Complainant. Some of the disputed domain names are currently inactive, as a consequence of the notifications sent by the Complainant’s counsels to the various hosting providers. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to the trademarks in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain names are identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark HERMES by providing inter alia evidence of registration of the Community nominative trademark no. 008772428 of December 1, 2009, of the Chinese nominative trademark no. 4933050 of October 8, 2005, of HERMES & carriage device Community trademark no. 008772436 of December 1, 2009, of HERMES & carriage device International trademark no. 665187 of November 6, 1996, of HERMES & carriage device Chinese trademark no. 4933036 of October 8, 2005.
Also, the Complainant has demonstrated ownership of the registered trademark BIRKIN by providing evidence of registration of the International nominative trademark no. 686529 of January 21, 1998 and of the French nominative trademark no. 97691016 of August 8, 1997. The Complainant has also demonstrated ownership of the registered trademark LINDY by providing evidence of registration of the French nominative trademark no. 3457528 of October 19, 2006 and the International nominative trademark no. 924725 of April 10, 2007. The Complainant also demonstrated ownership of the registered trademark CONSTANCE by providing evidence of registration of the French nominative trademark no. 3854877 of August 26, 2011.
The question of resemblance for the purpose of the Policy requires a comparison of the disputed domain names to the trademark rights which have been proved.
Here, the disputed domain names have certain differences from the trademarks of the Complainant HERMES, BIRKIN, CONSTANCE and LINDY, as detailed below.
The first difference is the addition of the ".com" or “.org” or “.net” suffix, as the case may be, to the relevant trademark of the Complainant. The addition of the generic top-level domain (gTLD) ".com" or “.org” or “.net” is without legal significance from the standpoint of comparing the disputed domain names to Complainants trademarks since use of a gTLD is required for domain name registration. ".com" or “.org” or “.net” are few of only several such gTLDs, and ".com" or “.org” or “.net” do not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk,WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
Also, some of the disputed domain names comprise generic terms in addition to the relevant trademark. This is the case of the following disputed domain names: , , , , , , . Many UDRP panels have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will not avoid a determination that the disputed domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985. The fact that a disputed domain name wholly incorporates a Complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903. The addition of generic terms does not serve to distinguish the disputed domain names from the trademark, but may reinforce the association of the Complainant’s trademark with disputed domain names. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Limited,WIPO Case No. D2000-0275; Société Air France v. RBlue,WIPO Case No. D2005-0290. In the case Prada S.A. v. Artie Johson, Private,WIPO Case No. D2011-0605, the panel decided that the addition of the term “handbags” as a suffix to the PRADA mark in the domain name does not mitigate the confusing similarity between the domain name and the PRADA mark because the term “handbags” is descriptive. .
In this case, apart from the gTLD, the disputed domain names , , , , , , consists of the Complainant’s trademark HERMES or BIRKIN and the suffix “2010”, “belt, “ on line shop”, “shops”, “wallet”, “bag”, “handbag”. The mentioned suffixes are of a descriptive nature only and the distinctive element of the disputed domain names is obviously the term “hermes”, or “birkin”. In these circumstances, Internet users finding , , , , , , are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the disputed domain names. (See F. Hoffmann-La Roche AG v. George Stiegman,WIPO Case No. D2008-1572 and decisions cited therein). In the case Hermes International v. Pan Bing Huang,WIPO Case No. D2010-2275, the panel decided that the domain names integrate the Complainant's trademark HERMES in its entirety, as a dominant element, with the additional non-dominant elements "taiwan", "2010", "tw" and "hi" that do not serve sufficiently to distinguish or differentiate the domain names from the Complainant’s HERMES trademark.
It should also be stressed that when a disputed domain name incorporates, as here, the entirety of the Complainant’s trademark, it is difficult, if not impossible, regardless of added terms to distinguish adequately the mark from the disputed domain name. The additional terms in our case, “2010”, “belt, “ on line shop”, “shops”, “wallet”, “bag”, “handbag”, are common terms of no significant value in distinguishing the mark HERMES or BIRKIN from the disputed domain names.
The same conclusions apply for other disputed domain names which include geographic terms. This is the case of the following disputed domain names: , , , , , , , , , , .
The above mentioned 11 disputed domain names comprises the HERMES trademark with the suffix being the name of a country (for example, ), of a city (for example, ), or the abbreviation of a country or geographical area (for example, ). The Panel finds that the addition of the geographical terms mentioned above do not sufficiently alter the underlying mark to which it is added. A user of the Internet is, in the Panel’s opinion, likely to assume that Complainant is the sponsor of, or is associated with, the website identified by the disputed domain name. See C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc.,WIPO Case No. D2004-0466. Other UDRP panes have reached the same conclusion when stating that “the addition of geographical terms to a complainant’s trademark also constitutes confusing similarity”, see L'Oréal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer, WIPO Case No. D2011-0524, or that “the addition of descriptive, generic or geographical terms to a trademark in a domain name does nothing to minimise the risk of confusion in order to overcome a complainant’s allegation that a domain name is confusingly similar to the trade mark”, see Moncler S.r.l. v. linhuiming,WIPO Case No. D2011-0172.
The other two disputed domain names comprise in their entirety two of the Complainants trademarks, respectively and .
Having regard the above the Panel finds that the disputed domain names are confusingly similar to the Complainant’s HERMES, BIRKIN, CONSTANCE and LINDY trademarks and that the Complainant met the first requirement of the Policy. B. Rights or Legitimate Interests
The consensus view of WIPO panels concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO OVERVIEW 2.0”), Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates,WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210, Pandora Jewelry, LLC v. WhoisGuard / Xiong Mao, fcg, WIPO Case No. D2009-1096).
The Respondent has not shown that it has made any bona fide commercial use or any legitimate noncommercial or fair use of the disputed domain name swithout any intent either for commercial gain or to mislead or divert consumers or tarnish the trademarks at issue.
The Complainant has adduced evidence that some of the disputed domain names are not used (i.e. , , , , , , ) while the other disputed domain names are being used solely for commercial gain. As such, the websites located at , , , , , , , , , , , , appear to indicate that the Respondent is using the websites to promote the sale of counterfeit or unauthorized imitations of the Complainant’s products, with no evidence of rights or legitimate interest as being a bona fide offering of goods and services, a business name, or use of the disputed domain names in the normal course of business.
However, when the Panel tried to type in the disputed domain names prior to drafting this decision, it discovered that the content of the websites for which the Complainant provided evidence of use (for what seems to be an offer of counterfeiting products) was apparently changed so that other various products are now offered for sale (over-year, in year headsets).
The Respondent has not demonstrated any reason as to why the content of the websites appears to have been changed following the filing of the Complaint. The disputed domain names , , , , , , , , , , , , incorporating the Complainant’s trademarks are now apparently being used to attract consumers to other products.
Irrespective of such change, as other UDRP panels have held, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the disputed domain names, that the Respondent possesses any trademark or service mark rights in the disputed domain names in question, or that the Respondent has other authority or permission to use the Complainant’s marks. Indeed, the Complainant states expressly that the latter is not the case See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti,WIPO Case No. D2001-1158 (finding no legitimate interest because, inter alia, the complainant had not licensed mark to the respondent). Furthermore, by not submitting a response to the Complaint, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interests in the disputed domain name. Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (respondent’s default alone sufficient to conclude that it had no rights or legitimate interests in the domain name). See V&V Supremo Foods, Inc. v. pxlchk1@, WIPO Case No. D2006-1373.
The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant lead the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain names. See in this respect Hermes International v. Yang Fen,WIPO Case No. D2010-2272.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names at issue. C. Registered and Used in Bad Faith
To fulfil the third requirement, the Complainant must prove that the disputed domain names has been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith:
(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 to the complainant who is the owner of the trademark, or to a competitor of the complainant, for a valuable consideration in excess of the respondent documented out-of-pocket costs directly related to the domain name.
(ii) Circumstances indicating that the respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
(iii) Circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s trademarks when it registered and started using the disputed domain names. The factors that were taken into account to arrive at this conclusion include the dates of registration of the disputed domain names which were only as recent as 2011 compared to the date when the Complainant started using the HERMES, BIRKIN, CONSTANCE and LINDY trademarks, the widespread use of the HERMES, BIRKIN, CONSTANCE and LINDY trademarks by the Complainant at a global level, and the fact that the Respondent was openly selling counterfeit or unauthorized imitations of the Complainant’s products through its websites to which several disputed domain names resolved. See in this respect Hermes International v. Yang Fen, supra.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. In this case, several of the disputed domain names (, , , , , , , , , , , , ) featured the Complainant’s HERMES, BIRKIN, CONSTANCE or LINDY trademarks and offered goods for sale which are identical to the items offered by the Complainant under its trademarks. The incorporation of the Complainant’s trademarks in the disputed domain names and the use of Complainant’s HERMES, BIRKIN, CONSTANCE or LINDY Trademarks to offer goods identical to those provided by the Complainant exhibit an intent to deceive consumers into believing that the disputed domain names are somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the disputed domain names in this manner could lead consumers to mistakenly believe that the products featured are offered, sponsored, endorsed, or otherwise approved by the Complainant, thereby diverting web traffic from Complainant’s , , , , and domain names.
The , , , , , , disputed domain names do not feature any active content. However there is no evidence in the record to indicate that Respondent has used these disputed domain names or intends to use these disputed domain names in connection with a bona fide offering of goods and services distinct from the goods provided by Complainant under the HERMES, BIRKIN, CONSTANCE or LINDY trademarks. As established in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of respondent’s behavior are indicative of bad faith. In this case, the Respondent’s registration of the mentioned disputed domain names was made in bad faith, and Respondent’s use of the disputed domain names , , , , , , , , , , , , certainly qualifies as bad faith use. The Panel believes that these factors combined with the lack of evidence in the record indicating that the Respondent has used or intends to use the , , , , , , disputed domain names for legitimate purposes supports a finding in favor of the Complainant. See Hermes International v. Fuzhoudongchen Tech Inc,WIPO Case No. D2011-0542.
Other factors which were considered by the Panel as indicative of bad faith registration and use of the disputed domain names are:
- The Respondent’s lack of response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210,
- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names,
- The apparent change of the content of the websites after the receipt of the Complaint. The change to the Respondent’s websites further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon,WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) or V&V Supremo Foods, Inc. v. pxlchk1@,WIPO Case No. D2006-1373,
- Any use of the disputed domain names would lead the public to the conclusion that it, and its connecting websites, were associated with the Complainant,
- Also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain names. The Respondent provided no explanations for which he registered the disputed domain names.
This Panel finds that the disputed domain name have been registered and are being used in bad faith, in accordance with the Policy. The third requirement of said Policy has 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 names, , , , , , , , , , , , , , , , , , , , be transferred to the Complainant.
Mihaela Maravela
Sole Panelist
Dated: December 30, 2011
Full & Egal Universal Law Academy