The Complainant is Hermès International of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Private Whois Service of Nassau, Bahamas. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with I Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On February 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 17, 2012, 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.
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 March 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2012. On March 7, 2012, the Center extended the due date for Response to March 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on April 4, 2012. 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
The Complainant, a French company, designs and sells a variety of luxury goods, including leather goods, luggage and handbags, clothing, jewelry and perfumes. The Complainant’s goods are marketed internationally through its self-owned boutiques. The Complainant’s HERMES mark has been used by the Complainant since 1837, and is registered in numerous jurisdictions around the world, including the European Community, the United States of America, and China. In addition to the well-known HERMES mark, the Complainant’s KELLY and BIRKIN marks are used in connection with popular models of luxury bags introduced in the 1930’s and 1980’s, respectively. The Complainant also holds trademark registrations for its KELLY and BIRKIN marks in multiple jurisdictions.
The disputed domain names were registered by the Respondent on various dates between November 29, 2010 and February 4, 2012, according to the WhoIs information maintained by the Registrar. The websites to which the disputed domain names resolve (referred to herein as the “Respondent’s websites”) offer for sale what are purported to be authentic HERMES bags at extreme discounted prices, or else offer “replica” HERMES bags at comparable prices. The Respondent’s websites typically display the Complainant’s HERMES mark or stylized HERMES logo. Some of the Respondent’s websites offer links to other sites selling purported luxury goods that compete with those of the Complainant. A number of the Respondent’s websites appear to be inactive. 5. Parties’ Contentions A. Complainant
The Complainant asserts that almost all of the disputed domain names incorporate the Complainant’s HERMES mark in its entirety, and that these disputed domain names thus are confusingly similar to the Complainant’s mark. The Complainant further asserts that a number of the disputed domain names also include the Complainant’s KELLY or BIRKIN marks, and are confusingly similar for this reason. According to the Complainant, its HERMES mark is a well-known and famous mark by virtue of its extensive and long use for more than 170 years, and KELLY and BIRKIN marks are also well known throughout the world in relation to leather, ready to wear, lifestyle accessories, perfumery, jewelry, and luxury goods. The Complainant submits that the addition of generic or descriptive (including geographically descriptive) words or terms does not negate the confusing similarity of the disputed domain names to the Complainant’s marks.
The Complainant argues that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant avers that the Respondent is not in any way related to the Complainant’s business, has not been authorized to use the Complainant’s marks, and has not been commonly known by the disputed domain names. The Complainant maintains that its goods are available worldwide exclusively from its self-owned stores, and that the Respondent thus is using the disputed domain names in order to sell counterfeit “Hermes” goods. In addition, the Complainant submits that a number of the Respondent’s websites also contain advertising links to other websites offering for sale the goods of the Complainant’s competitors. Accordingly, the Complainant asserts that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services.
In light of the foregoing, the Complainant argues that the Respondent registered and is using the disputed domain names in bad faith. The Complainant submits that under the circumstances of this case it is impossible that the Respondent was not aware of the Complainant’s marks. The Complainant asserts that the Respondent’s sole purpose in registering the disputed domain names was to attract Internet users to the Respondent’s websites for commercial gain through the creation of a likelihood of confusion with the Complainant’s well-known marks, in order to sell counterfeit goods on its websites, or to provide links to other websites offering competing goods.
The Complainant points out that some of the Respondent’s websites currently are inactive due to the Complainant’s efforts, but that the Respondent can circumvent this by moving the disputed domain names to a different Internet service provider. Accordingly, in consideration of all of the foregoing, the Complainant seeks the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions.1 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar in relation to the Complainant’s HERMES, KELLY or BIRKIN marks, in which the Complainant beyond question has demonstrated rights. Each of the disputed domain names save one is confusingly similar to the Complainant’s well-known HERMES mark, and the disputed domain name is confusingly similar to the Complainant’s BIRKIN mark. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
There are differing views as to what is meant by “confusingly similar” in this context. In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 the panel applied a test which expressly disavowed any call for a likelihood of Internet user confusion; by contrast in SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648, the panel took a diametrically opposed view. The range of views is discussed in Apple Inc. v. Fred Bergstrom, Lotta Carlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.
In this instance, all but one of the disputed domain names incorporate the Complainant’s HERMES mark in its entirety, and the Panel finds that these disputed domain names are confusingly similar to the Complainant’s mark, whichever test is applied. In the Panel’s view, the confusing similarity of the disputed domain names to the Complainant’s HERMES mark is not overcome merely by the addition of dictionary or descriptive terms, and many of the disputed domain names incorporate the Complainant’s KELLY and BIRKIN marks or add other terms, such as “bags”, that are likely to call to mind the Complainant. The disputed domain name differs from the Complainant’s BIRKIN mark only by the addition of the end letter “g”, and is also confusingly similar to the Complainant’s mark, whichever test is applied. This slight variation is strongly evocative of the practice commonly referred to as “typosquatting” – the intentional registration of a domain name that is a common or obvious misspelling of a mark, and supports a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 1.10.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Respondent is identified in the Registrar’s WhoIs database as the registrant of seventy-five (75) domain names which variously incorporate the Complainant’s HERMES, KELLY and BIRKIN marks singularly or in combination. It is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s HERMES, KELLY or BIRKIN marks. The Respondent notwithstanding is using or has permitted those disputed domain names which do resolve to be used with websites from which it is highly likely that counterfeit goods are being passed off as genuine HERMES-branded goods. Further, some of the Respondent’s websites contain links to other sites offering similar products – possibly counterfeit as well – that compete with the Complainant’s goods, or are parking pages pointing to sites where such goods appear to be available.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record before the Panel, the Respondent clearly had the Complainant’s HERMES, KELLY and BIRKIN marks in mind when registering the disputed domain names. The Panel finds that the Respondent registered the disputed domain names in order exploit and profit from the Complainant’s rights in these marks through the creation of initial interest confusion. Considering the overall look and feel of the Respondent’s websites, the prominent display of the Complainant’s HERMES logo and mark in many instances, and the absence of any effective disclaimer, Internet users easily could be confused whether the Respondent’s websites are affiliated with or have the endorsement or sponsorship of the Complainant, or whether the goods being offered on those websites are in fact genuine HERMES, KELLY, or BIRKIN-branded goods. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. As noted earlier, the record before this Panel strongly suggests that counterfeit goods are being offered on many of the Respondent’s websites.
Even were the Panel to assume arguendo that the Respondent’s websites are offering the Complainant’s authentic goods as opposed to imitations thereof, the consensus view of UDRP panelists is that a reseller offering trademarked goods or services using a domain name containing the trademark may establish rights or legitimate interests in the domain name only where the following conditions are met:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
See WIPO Overview 2.0, at paragraph 2.3. The leading decision is Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter “Oki Data”). Some panels subscribing to the principles established in Oki Data have determined it may be applicable to both authorized and unauthorized resellers. See WIPO Overview 2.0, at paragraph 2.3.
Even a cursory review of the record in this administrative proceeding demonstrates that the Respondent has not satisfied the Oki Data criteria. The Respondent has not disclosed the nature of its relationship with the Complainant. The Respondent’s registration of seventy-five (75) domain names appropriating the Complainant’s marks suggests that the Respondent has set out to “corner the market” in all relevant domain names. The record further reflects the Respondent’s prominent use of the Complainant’s HERMES mark and logo on many of its websites. Even if the goods offered on the Respondent’s websites are authentic – which the Panel considers unlikely – the Respondent is offering other competing products, evocative of “bait and switch” tactics.
In short, the record does not reflect the Respondent’s use of the disputed domain names in connection with a bona fide offering of goods are services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, or that the Respondent has been commonly known by the disputed domain names. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondent was well aware of the Complainant and had the Complainant’s marks in mind when registering the disputed domain names. The Respondent’s primary motive in relation to the registration and use of the disputed domain names most likely was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of Internet user confusion. In view of all of the foregoing, the Panel concludes that the Respondent registered and has used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
The Respondent’s apparent passive holding of some of the disputed domain names does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Considerations that supported a finding of bad faith in Telstra are present in this case as well. The Complainant’s marks have a global reputation, and as in Telstra, there is no evidence of any actual good faith use of the disputed domain names by the Respondent, or of any demonstrable preparations to make a good faith use of the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and
be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: April 18, 2012
1 The Panel notes that the named Respondent is the registrant of the disputed domain names identified in the Registrar’s WhoIs records. Regardless, to the extent that the Respondent may be a privacy protection service, in the absence of any disclosure of an underlying registrant, the Panel considers the Respondent properly named in the Complaint. Further, even assuming more than one undisclosed underlying registrant, the Panel finds that the consolidation of the multiple disputed domain names in the circumstances of this case is appropriate under the Policy and Rules. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 (consolidation of multiple domain names in unitary administrative proceeding appropriate where disputed domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties).
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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