The Complainant is H & M Hennes & Mauritz AB, Sweden, represented by Stobbs IP Limited, United Kingdom.
The Respondent is WhoisGuard, Inc., Panama / Alaa Mohamed, Egypt. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 23, 2020, 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 December 23, 2020. On December 24, 2020, the Respondent contacted the Center indicating the possible transfer of the Domain Name. The Center notified the parties of a possible settlement on January 3, 2021. On January 8, 2021, the Complainant requested suspension of the proceeding. In accordance with the Rules, paragraph 17, the Center notified the parties of the suspension of the proceeding on January 11, 2021. On February 1, 2021, the Complainant requested reinstitution of the proceeding. The proceeding was reinstituted as of February 2, 2021. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the parties about the commencement of the panel appointment process. The Center appointed Olga Zalomiy as the sole panelist in this matter on March 9, 2021. 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 is a multinational clothing-retail group that owns multiple registrations for the H&M trademarks, such as: -International registration No. 634642 for the stylized H&M word trademark, registered on March 24, 1995; -United States trademark registration, No. 2397326 for the stylized H&M word trademark, registered on October 24, 2000. The Domain Name was registered on April 24, 2020. The Domain Name redirects to the Complainant’s website. 5. Parties’ Contentions A. Complainant The Complainant alleges that it is a multinational clothing-retail group. The Complainant contends that it is the registered proprietor of the H&M trademarks. The Complainant submits that the Domain Name is confusingly similar to that of the H&M trademark. The Complainant argues that the use of the ampersand “&” cannot be reflected in domain names, so in this case the relevant element of the trademark is “HM”. The Complainant states that the Domain Name wholly incorporates the “HM” term, along with the use of the word “coupon”. The Complainant submits that the addition of the word “coupon” does not negate a finding of similarity between the Complainant’s trademark and the Domain Name. The Complainant alleges that the generic Top-Level Domain (“gTLD”) suffix “.com” should be omitted from assessment of confusing similarity between the Domain Name and the Complainant’s trademark, as it is merely a technical requirement, used for domain name registrations. The Complainant submits that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant submits that the Domain Name currently redirects to the Complainant’s website “www2.hm.com” and that such use does not constitute a bona fide offering of goods and services, as the content could be changed at any point. The Complainant asserts that the Domain Name has an active MX record, meaning that the Respondent could be using the website under the Domain Name for sending emails purporting to be from the Complainant. The Complainant contends that the Respondent has never legitimately been known by the name H&M. The Complainant argues that nothing about the Domain Name suggests that the Respondent is making a legitimate noncommercial or fair use because the Domain Name currently redirects to the Complainant’s website, which is likely set up for the purpose of creating an association with the Complainant. The Complainant alleges that the Domain Name has been registered and is being used in bad faith. The Complainant sent a cease and desist notice to the Respondent on September 11, 2020 and followed up on the cease and desist letter with the October 22, 2020 and the November 2, 2020 emails. The Complainant contends that on November 3, 2020, the Respondent sent an email to the Complainant expressing willingness to resolve the matter: “I want to solve this problem what should I do”. The Complainant contends that it wrote back on multiple occasions, requesting the transfer of the Domain Name, but the Respondent chose not to comply. The Complainant states that the H&M trademarks significantly predate the registration of the Domain Name. The Complainant asserts that the H&M trademark has received widespread recognition. The Complainant argues that the Respondent had actual knowledge of the Complainant’s H&M trademark and that the Domain Name was registered with the sole purpose of targeting the Complainant’s brand, because the Domain Name currently redirects to the Complainant’s website. The Complainant contends that even though the Respondent is using the Domain Name to redirect to the Complainant’s website, the fact that it is not under the Complainant’s control is a concern. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the Domain Name 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 in respect of the Domain Name; and (iii) the Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark to which the Complainant has rights. The submitted evidence shows that the Complainant owns several trademark registrations for the H&M trademark. Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case. The Domain Name consists of the Complainant’s H&M trademark without ampersand, a hyphen, the word “coupon” and the gTLD “.com”. Previous UDRP panels found that the use of the ampersand cannot be reflected in domain names and that the deletion of the symbol is the functional equivalent of ampersand.1 “[W]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”2 It is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.3 Because the relevant element of the trademark, “hm”, is recognizable within the Domain Name, neither addition of the word “coupon”, nor the addition of a hyphen, prevents the finding of confusing similarity between the Domain Name and the Complainant’s trademark. Since the “.com” gTLD is disregarded under the confusing similarity test, the Domain Name is confusingly similar to the Complainant’s trademark. The Panel finds that the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To satisfy the second UDRP element, the Complainant must make a prima facie case in respect to the lack of rights or legitimate interests of the Respondent.4 Pursuant to paragraph 4(c) of the UDRP, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the UDRP: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has not licensed or permitted the Respondent to use the Complainant’s H&M trademark in domain names, or for any other purpose. The Panel accepts that there is no evidence that the Respondent has been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name because the Domain Name redirects users to the Complainant’s website and it is plausible that it is set up for the purpose of creating an association with the Complainant. Further, previous UDRP panels have found that “a respondent’s use of a complainant’s mark to redirect users … would not support a claim to rights or legitimate interests”.5 For the reasons stated, the Panel finds that the Complainant has made a prima facie case in respect to the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, 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.6 The Respondent has failed to do so. Thus, the Panel concludes that the Complainant has satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios constitutes evidence of a respondent’s 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 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) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location. Given the substantial use and advertising of the Complainant’s H&M trademark for an extended period of time, the registration of the Domain Name more than twenty-five years after the registration of the Complainant’s mark and the Domain Name redirecting to the Complainant’s website, it is likely that the Respondent targeted the Complainant at the time of the Domain Name’s registration and registered the Domain Name in bad faith to trade on the goodwill of the Complainant’s trademark. It is also likely that the Respondent, who does not have any rights or legitimate interests in the Domain Name, will likely benefit from and/or unlawfully trade upon the renown associated with the Complainants’ H&M trademarks. Nor is there any plausible way the Respondent could be using the Domain Name in good faith. Previous UDRP panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection, thus creating a real or implied ongoing threat to the complainant.7 Based on the above, the Respondent registered and is using the Domain Name in bad faith. Thus, the Panel concludes that the Complainant has satisfied the third element of the UDRP. 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 Domain Name Olga Zalomiy 1 H & M Hennes & Mauritz AB v. Domain Admin, PrivacyProtect.org / Horario Mendoza,WIPO Case No. DCO2014-0008; H & M Hennes & Mauritz AB v. Chen Jia Jin and Elizaveta Kolesnikova,WIPO Case No. D2020-0999. 2 Section 1.8, WIPO Overview 3.0. 3 Section 1.11.2, WIPO Overview 3.0. 4 Section 2.1, WIPO Overview 3.0 5 Section 2.5.3, WIPO Overview 3.0. 6 Section 2.1, WIPO Overview 3.0 7 Section 3.1.4, WIPO Overview 3.0.
Sole Panelist
Date: March 23, 2021
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