Complainant is Hermes International, France, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / Junping Lian, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2020, 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 Complainant on June 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center also sent another email regarding the Registrar information on the same day. Complainant filed an amended Complaint on June 19, 2020. 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 21, 2020. The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on August 3, 2020. 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 Complainant is a French high fashion luxury goods manufacturer established in 1837. At the end of 2018, Complainant employed 15,417 people worldwide and had 311 exclusive stores, 223 of which are operated directly. Complainant is active in several sectors such as leather goods, saddlery, ready-to-wear and accessories, perfumes, watches, art of living and tableware. In 2019, Complainant experienced a strong growth of 18% in Asia after its launch on Alibaba’s Group ecommerce platform - TMall. Complainant created the Hermes Foundation in 2008, which aims to support individuals and organizations seeking to learn, perfect, transmit and celebrate craftsmanship activities worldwide. According to global brand valuation firm Interbrand, Hermes was ranked 28th amongst the Best Global Brands in 2019. With a market capital value of USD 71.5 Billion, Complainant was also ranked on Forbes list at number 33 of the World’s Most Valuable Brands in 2019, as well as number 788 of Global 2000 in 2019. Complainant interacts with its customers globally through its website at its primary domain name Complainant owns several other domain names, including Complainant is the owner of numerous trademark registrations across various jurisdictions incorporating the mark HERMES, including but not limited to the following: - French Trademark Registration No. 229193A, HERMES, registered March 3, 1960; - International Trademark Registration No. 196756, “HERMES”, registered November 21, 1956; - Chinese Trademark Registration No. 4933037, HERMES and Design, registered April 28, 2009; - European Union Trademark Registration No. 008772436, HERMES and Design, registered December 23, 2010; - European Union Trademark Registration No. 008772428, HERMES, registered February 4, 2012. The disputed domain name was registered on June 23, 2017, and resolves to a website featuring Complainant’s trademark and logo and selling counterfeit versions of Complainant’s products. Respondent has ignored Complainant’s attempts to resolve this dispute outside of this proceeding. Respondent failed to respond to Complainant’s cease and desist letters. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark, that 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. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar Complainant has demonstrated that it has rights in the trademark HERMES. The disputed domain name incorporates Complainant’s mark in its entirety with the addition of the terms “bags” and “tmall”. The addition of the descriptive term “bags” refers to Complainant’s products. The term “tmall” refers to the Chinese-language website for business-to-consumer online retail platform, through which Complainant sells brand name goods to consumers in, inter alia, mainland China, Hong Kong, China, Macau, China. The addition of the terms “bags” and “tmall” in the disputed domain name does not avoid confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests Complainant contends that Respondent is not affiliated with or connected to Complainant in any way. At no time has Complainant licensed or otherwise endorsed, sponsored or authorized Respondent to use any of Complainant’s marks or to register the disputed domain name. The record is devoid of any facts that establish any rights or legitimate interests of Respondent in the disputed domain name. There is no evidence that Respondent has been commonly known by the disputed domain name or that it has any rights that might predate Complainants’ adoption and use of the HERMES marks, domain names and associated websites. Complainant’s first use of the HERMES mark dates back to as early as 1837, almost two centuries ago and well before the registration of the disputed domain name. Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name. Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services. Despite takedown requests sent on behalf of Complainant, Respondent continues to use the disputed domain name to host a website which prominently features the HERMES logotype, trademark and offers for sale counterfeit versions of Complainant’s products. Respondent is taking advantage of the fame and goodwill that Complainant has built in its brand, and is also imitating Complainant by displaying Complainant’s logo. Respondent is using a confusingly similar disputed domain name to mislead Complainant’s customers. Respondent is using the disputed domain name in connection with a commercial website offering counterfeited versions of Complainant’s products. Respondent registered the disputed domain name on June 23, 2017, which is significantly after Complainant filed for registration of its HERMES trademark with the Chinese National Intellectual Property Administration (CNIPA) Trademark Office. This indicates that Respondent intends the disputed domain name to be confusingly similar to Complainant’s trademark as a means of furthering consumer confusion. The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant’s HERMES trademark is internationally well known, with trademark registrations across numerous countries. By registering the disputed domain name incorporating Complainant’s famous trademark in its entirety, Respondent has created a domain name that is confusingly similar to Complainant’s trademark. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s trademark and business. Despite the takedown notices sent on behalf of Complainant, Respondent is still using a confusingly similar domain name to resolve to a commercial website featuring Complainant’s logo and selling counterfeit versions of Complainant’s products. It is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s brand at the time the disputed domain name was registered. The record indicates that Respondent selected the disputed domain name to deliberately trade off and profit from Complainant’s famous mark. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website located at the disputed domain name. Respondent is using the fame of Complainant’s trademarks to improperly increase traffic to the website at the disputed domain name for Respondent’s own commercial gain. Such conduct constitutes bad faith. Moreover, Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use because Respondent’s disputed domain name is confusingly similar to Complainant’s trademarks and the website at the disputed domain name is being used to offer counterfeit goods. Respondent employed a privacy service to hide its identity. The use of a privacy service to intentionally delay disclosure of the identity of Respondent is another indication of bad faith. Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. 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 Lynda J. Zadra-Symes
Sole Panelist
Date: August 17, 2020
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