The Complainant is Hermès International of Paris, France, represented by Fidal, France.
The Respondent is Yinsheng She, None of Putian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2012. On April 19, 2012, the Center transmitted by email to April 19, 2012, a request for registrar verification in connection with the disputed domain name. On April 21, 2012, UK2 Group Ltd. 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 April 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2012.
The Center appointed Petter Rindforth as the sole panelist in this matter on May 24, 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is a French high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods.
The Complainant has submitted evidence (Annex F1 to F11 of the Complaint showing Certificates of Registrations, etc) that it is the owner a number of trademark registrations for HERMÈS as a word mark or as a figurative mark, such as:
• French Reg. No. 1558350 HERMÈS, filed on October 16, 1979, covering goods and services in Classes 1 - 45
• French Reg. No. 1377454 HERMÈS (figurative), filed on November 30, 1976, covering goods and services in Classes 1 - 45
• Community Trademark Reg. No. 008772428 HERMÈS (word), filed on December 1, 2009 and registered on April 2, 2012, covering goods and services in classes 3, 6, 8, 9, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35, 38, 41, 43 and 44
• Community Trademark Reg. No. 008772436 HERMÈS (figurative), filed on December 1, 2009 and registered on December 23, 2010, covering goods and services in classes 3, 6, 8, 9, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35, 38, 41, 43 and 44
• United States America Trademark Reg. No. 2213940 HERMÈS, filed on May 15, 1997 and registered on December 29, 1998, covering goods in classes 8, 9, 21, 28 and 34
• United States America Trademark Reg. No. 73494010 HERMÈS (figurative), filed on August 9, 1984 and registered on October 8, 1985, covering goods in class 21
• Chinese Trademark Reg. No. 4932845 HERMES (word), filed on October 8, 2005 and registered on March 14, 2009, covering goods in class 18
• Chinese Trademark Reg. No. 4933050 HERMES (word), filed on October 8, 2005 and registered on March 14, 2009, covering goods in class 25
• Chinese Trademark Reg. No. 4933036 HERMES (device), filed on October 8, 2005 and registered on May 14, 2009, covering goods in class 25
• International Registration No. 665187 H HERMES (device), registered on November 6, 1996, covering goods in class 16
• International Registration No. 196756 HERMÈS (word), registered on November 21, 1956, covering goods and services in classes 1 - 34
The disputed domain name was registered on September 3, 2011. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant describes its business development since the establishment in 1837, including the opening of multiple locations all over Europe, the United States and Japan in the 1970s, the opening of a store in Beijing in 1996, and the opening of boutiques in New York, Lisbon, Santiago, Barcelona and Taiwan in 2000.
The Complainant has fourteen (14) product divisions encompassing leather, scarves, ties, menswear, women’s fashion, perfume, watches, stationery, footwear, gloves, enamel, decorative arts, tableware, and jewellery, with a company revenue of around EUR 2,5 billion in 2010.
The Complainant informs that the Asia-Pacific region generated 43% of the Complainant’s sales in 2009, and the expansion in Asia mainly covers mainland China, Macau and Hong Kong. To date, in China, twenty (20) branches/stores are opened, notably in Beijing, Canton, Shanghai and Shenzhen.
The Complainant refers to trademark registrations for HERMÈS as a word mark or as a figurative mark, some covering China and all predating the date of registration of the disputed domain name. In addition, the Complainant also claim to use the trademark as parts of a number of registered domain names, such as , , , and , all registered before the registration date of the disputed domain name.
According to the Complainant, HERMÈS is a famous mark and well-known throughout the world in the field of the leather, ready-to-wear, lifestyle accessories, perfumery, jewelry and luxury goods.
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademark HERMÈS, as it consists of the famous trademark HERMÈS and the descriptive term “soldes”, meaning “sales” in French.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found any trademark rights related to the Respondent, the Respondent is not known as HERMÈS, not related to the Complainant, and the Complainant has not authorized the Respondent to use the HERMÈS trademark.
According to the Complainant, is used to sell counterfeited goods marked with the Complainant’s trademark, and such use does not give the Respondent any rights to the trademark or to the disputed domain name.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith.
Here, the Complainant refers to the fact that HERMÈS is a well-known trademark, and that the Respondent has registered for the sole purpose of commercially benefitting from Internet traffic generated to the Respondent’s website, which reproduces the Complainants trademark protected logo in connection with the word “Hermès”.
The Complainant claims that the Respondent is selling counterfeited goods by using the disputed domain name, and that this amounts to bad faith use.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the HERMÈS trademark, registered and well-known in a number of countries, including China – the home country of the Respondent.
The relevant part of the disputed domain name is “soldeshermes”. The Panel concludes that the disputed domain name consist of the Complainant’s trademark HERMÈS, with the addition of the generic word “soldes” – the French word for “sales”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark.
The generic word may even add to the confusing similarity. See Scholastic Inc. v. 366 Publications,WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’ […] is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”; see also Moncler S.r.l. v. Shuangying Chen,WIPO Case No. D2011-0416 (regarding , and others) “The addition of descriptive elements is insufficient to avoid confusing similarity, especially since they are connected with the Complainant’s market for its products. The most prominent element in the disputed domain names is clearly the term ‘Moncler’, which lacks dictionary meaning, and may cause the public to view it as connected to the MONCLER trademark”.
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s trademark HERMÈS. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency),WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant’s products and has no other permission to apply for any domain name incorporating the trademark HERMÈS. See Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
There is no evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary, the Respondent is using the disputed domain name for a website where the Complainant’s trademark is clearly displayed, both in its word and device versions, to sell goods that – according to the unrebutted assertion by the Complainant are counterfeited versions of the Complainant’s products. The Panel concludes that such use can never establish legitimate interests. See MSNBC Cable, LLC v. T,WIPO Case No. D2000-1204 (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website). See also Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258 (stating that “[…] the Respondent is not connected with the Complainant, but uses the Complainant’s mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favour of the Respondent”).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As the Complainant has described and proved, the trademark HERMÈS is well-known and the trademark registrations are covering, among other countries, China – the home country of the Respondent, and predating the registration date of the disputed domain name.
Accordingly, the Respondent is likely to not only have knowledge of the Complainant’s mark when registering , but also the mere combination of the trademark with the generic word “soldes” indicates that the Respondent registered the disputed domain name with the Complainant’s mark in mind. See Hermès International v. Te Hao, WIPO Case No. D2011-0539 (“Given the high degree of fame of the HERMES trade mark throughout the world for many years at the time that the Disputed Domain Names were registered by the Respondent, as well as the fact that the websites to which the Disputed Domain Names resolved featured the Complainant’s horse and carriage logo, the Panel accepts that the Respondent was aware of the Complainant’s HERMES trademark at the time of registering the Disputed Domain Names”).
Further, the disputed domain name is used for a website that refers to the Complainant’s goods, counterfeit versions or not, in a way that the Panel concludes is a deliberate attempt for commercial gain to create a likelihood of confusion with the Complainant’s trademark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name. See Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant”); see also Hermes International v. Fuzhoudongchen Tech Inc, WIPO Case No. D2011-0542 (“the domain name features Complainant’s HERMES Trademarks and offers goods for sale which are identical to the items offered by Complainant under its HERMES Trademarks. The incorporation of Complainant’s trademark in the disputed domain name and the use of Complainant’s HERMES Trademarks to offer goods identical to those provided by Complainant exhibits an intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant.”)
In the absence of any Response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant.
Thus, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, and that the Complainant has succeeded in proving the three elements within 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 disputed domain name be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Dated: June 7, 2012
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