The Complainant is Hèrmes International of Paris, France, represented by Fidal, France.
The Respondent is PrivacyP / Frank.will of Queendsland, Australia and Shanghai, Shaanxi, China, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Cloud Group Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 1, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 6, 2012.
The Center verified that the Complaint together with the amendment to 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 August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2012.
The Center appointed Vinod K. Agarwal as the sole panelist in this matter on September 14, 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 Hèrmes International is a company registered according to the laws of France. It is a French high fashion house established in 1837. Since then it has constantly endeavored to enlarge and develope its business activities worldwide. Presently the Complainant has 14 product divisions encompassing (1) leather, (2) scarves, (3) ties, (4) menswear, (5) women’s fashion, (6) perfume, (7) watches, (8) stationery, (9) footwear, (10) gloves, (11) enamel, (12) decorative arts, (13) tableware, and (14) jewellery. In addition, the Complainant also prepares handmade luggage and handmade bags. The Complainant has never licensed any of its products and has kept tight control over the design and manufacture of its vast range of goods.
The Complainant has a number of boutiques in different parts of the world including New York, Lisbon, Santiago, Barcelona, New Delhi, Shanghai, Tokyo and Taiwan.
The Complainant has about 20 stores in Japan and about 20 branches/stores in China including Beijing, Canton, Shanghai and Shenzhen. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that it is the owner of a large number of trademarks consisting of and including the word “hèrmes” in respect of various products. The Complainant has been using the trademark HERMES in a large number of countries for the last more than 150 years. The Complainant also has been present in Japan for a very long time. Therefore, the trademark HERMES has become associated with the Complainant and is famous worldwide.
The addition of name of a country, in the present case Japan, or gTLD “.com” to a domain name does not make the domain name independent or distinct. The use of the said trademark of the Complainant in the domain name is also likely to generate confusion.
According to the Complaint, the Complainant’s trademark HERMES is registered in various countries. For example, in France, the Complainant’s trademark HERMES is registered in all the Classes of the International Classification. In European Union, the trademark HERMES is registered in many Classes, such as, 03, 06, 08, 09, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35, 38, 41, 43 and 44. Similarly, in the United States of America the trademark HERMES is also registered in different Classes, such as, IC 008, IC 009, IC 021, IC 028 and IC 034. All these trademarks predate the disputed domain name registration.
The Complainant submits it is the owner of the following domain names: , , , , , , etc.
In support of its contentions, the Complainant has relied on the following earlier UDRP decisions:
(a) Champagne Lanson v. Development Services/MallP, Inc.,WIPO Case No. D2006-0006; In this case the disputed domain name was . It has been held that the addition of gTLD “.com” is not significant in determining whether the domain name is identical or confusingly similar to the mark.
(b) Hermes International v. Yufang Zhong, WIPO Case No. D2010-2117; In this case the domain name was .
(c) L’Oréal and Lancome Perfums et Beauté et Compagnie v. Deco Trends & Art K. Plooyer, WIPO Case No. D2011-0524; In this case the domain name was . It has been held that addition of non-distinctive terms do nothing to reduce the confusing similarity of the domain name with complainant’s trademark.
Moncler S.r.l. linhulming, WIPO Case No. D2011-0172. In this case the disputed domain name was . It says that, “It is well establish that the addition of descriptive, generic or geographical terms to a trademark in a domain name does nothing to minimize the risk of confusion in order to overcome a complainant’s allegation that a domain name is confusingly similar to the trademark.”
In relation to the second element of the Policy, the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name as the Respondent is known as PrivacyProtect/Frank.will. The disputed domain name is not a descriptive word in which the Respondent may have a genuine interest.
The Respondent is making no use of the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent registered the disputed domain name for the sole purpose of confusing, misleading and misdirecting the public and the customers of the Complainant.
Regarding the third element of the Policy, the Complainant contends that the Respondent’s main intention in registering the disputed domain name is to mislead the general public and the customers of the Complainant. Further that, the Respondent is only interested in the financial gain generated by his website to the detriment of the Complainant.
In support of its contentions, the Complainant has relied on the following cases:
(A) HERMES INTERNATIONAL v. Zhang Feng,WIPO Case No. D2011-1125. In this case the disputed domain names were and .
(b) Hermes International v.Fuzhoudongchen Tech Inc,WIPO Case No. D2011-0542. In this case the domain name was .
(c) Chanel Inc. v. Chenying,WIPO Case No. D2009-1705. In this case the disputed domain names were , and . 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 that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Respondent has created the disputed domain name on June 2, 2012. The said registration expires on June 1, 2013. It is a combination of two words, namely, “hermes” and “japan”. HERMES is the registered trademark of the Complainant. “Japan” is the name of a country. Thus, as has been stated by the Complainant, the addition of name of a country or gTLD “.com” in a domain name does not make the domain name separate and distinct. The addition of name of a country to a well established trademark does not alter the trademark to which it is added.
The incorporation of a trademark in its entirety is typically sufficient to establish that the domain name is identical to a complainant’s trademark. Here it is also likely to generate confusion in the minds of customers of the Complainant.
Thus, the Panel finds that the disputed domain name is identical or confusingly similar to the registered trademark of the Complainant. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the disputed domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any response to rebut the Complainant’s contentions. Based on the evidence provided by the Complainant, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name .
Further, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the disputed domain name incorporating the Complainant’s trademark. Further, that the Respondent is not, in anyway, related to its business, is not one of its agent and does not carry out any activity for or has any business with it. Therefore, in this Panel’s view, it is unlikely that someone would use the word “hermes” unless seeking to create an impression of an association with the Complainant and its trademark.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. 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 or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site 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 Respondent’s web site or location or of a product or service on its web site or location.
As demonstrated by the Complainant, in the present case notably requirements enumerated in paragraph 4(b)(iv) are satisfied. It is highly unlikely that the Respondent would not have had knowledge of the Complainant’s trademark and its worldwide fame while registering the disputed domain name. the Panel finds that the Respondent has, intentionally and deliberately, registered the disputed domain name mainly for the purpose of disrupting the business of the Complainant and commercially benefitting from internet traffic arriving at the Respondent’s websites. The website operated from the disputed domain name advertises that at the stores the visitors will be able to find Hèrmes goods at low prices.
The overall circumstances and the evidence submitted by the Complainant lead to the conclusion that the disputed domain name was registered and used by the Respondent in bad faith. 7. Decision
In the light of the foregoing reasons, namely, that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith, 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.
Vinod K. Agarwal
Sole Panelist
Dated: September 24, 2012
Full & Egal Universal Law Academy