The Complainant is H & M Hennes & Mauritz AB, Sweden, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 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 7, 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 10, 2020. 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 December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021. The Center appointed Vincent Denoyelle as the sole panelist in this matter on February 8, 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 Given that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint. The Complainant is a multinational clothing-retail group headquartered in Sweden. The Complainant is the owner of several trade marks for H&M including the following: - International Trademark H&M, registration no. 785451, registered on August 2, 2002; and - United States Patent and Trademark Office (USPTO) Trademark H&M, registration no. 2397326, registered on October 24, 2000. The Complainant is also the owner of several domain names reflecting its trade mark including The Domain Name was registered on June 22, 2020, and the Domain Name currently resolves to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the H&M trade mark in which the Complainant has rights. The Complainant has provided evidence that it owns many registered trade marks for the term H&M and the Complainant contends that is has built up substantial recognition in the public domain, supported by awards and accolades as well as endorsement on social media. According to the Complainant, the Domain Name is confusingly similar to the H&M trade mark. The Complainant stresses that as the use of the ampersand “&” cannot be reflected in domain names, the relevant element of the Complainant’s trade mark is the term “HM”. The Complainant adds that the Domain Name wholly incorporates the term “HM” along with the use of a hyphen (-), which does nothing to materially alter the overall impression of the Domain Name. According to the Complainant, the addition of the hyphen is merely used to serve as a connector between the letters “H” and “M” and in turn reinforces the association with the Complainant and the H&M trade mark. In support of this claim, the Complainant explain that an Internet search carried out for “H-M” triggers results relating to the Complainant. Finally, on the first element the Complainant highlights that the addition of the Top-Level Domain (“TLD”) “.pw” is merely a registration requirement and that it should be disregarded for the purpose of assessing confusing similarity. Turning to the second element, the Complainant submits that the Domain Name used to resolve to a website featuring the Complainant’s H&M logo and purporting to offer “free £100 vouchers” illegitimately. The Complainant therefore submits that the Respondent is using the Domain Name for illegitimate purposes and that the Respondent is seeking to deceive members of the public and that this cannot constitute a bona fide offering of goods or services. In addition, the Complainant submits that to the best of its knowledge, the Respondent has never legitimately been known by the term H&M at any point in time. Finally, on the second element, the Complainant contends that nothing about the Domain Name suggests that the Respondent is making a legitimate noncommercial or fair use. Turning to the third element, the Complainant highlights that it has attempted to contact the Respondent on three occasions, by way of cease and desist letters dated October 7, 2020, October 19, 2020 and November 2, 2020, to which no response was received. As to registration of the Domain Name in bad faith the Complainant points to the significant global renown of the Complainant and the subsequent use of the H&M logo on the associated website to conclude that the Respondent had actual knowledge of the Complainant’s trade mark and that the Domain Name was registered with the sole purpose of targeting the Complainant’s trade mark. Finally, on use in bad faith, the Complainant points to the recent use of the Domain Name to allegedly mislead Internet users and potentially obtain their data which, according to the Complainant is something that should be stopped immediately before any further deception is caused. The Complainant thus contends that the Domain Name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely: (i) the Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered and is being used in bad faith. In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will base its decision on the basis of the Complaint and supporting Annexes. A. Identical or Confusingly Similar In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in H&M. The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark H&M in which the Complainant has rights. At the second level, the Domain Name consists of the three-character term “h-m”. The Panel finds that upon carrying out a side-by-side comparison of the Domain Name and the textual components of the trade mark H&M, the Complainant’s trade mark is recognizable within the Domain Name. The structure of the term Then there is the addition of the TLD “.pw”. As is generally accepted, the addition of a TLD such as “.pw” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test. Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to [the respondent] 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) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or (iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” Numerous previous panels have found under the UDRP that once a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name. Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name. The Complainant has produced evidence that the Domain Name was used to point to a page containing the highly recognizable Complainant’s H&M trade mark and logo and purporting to offer free vouchers and inviting Internet users to submit personal data. Given the failure of the Respondent to rebut the Complainant’s assertions, the Panel finds on the basis of the Complaint and the Annexes that the recent use of the Domain Name was prima facie an illegitimate use of the website and as such could not possibly constitute a bona fide offering of goods or services (See WIPO Overview 3.0, section 2.13.1). In the absence of any response or communication from the Respondent and based on the statements from the Complainant, there is no indication that could lead the Panel to conclude that the Respondent has been commonly known by the Domain Name or that the Respondent has acquired any trade mark or service mark rights corresponding to the Domain Name. Finally, the use of the Domain Name evidenced in Annex 11 of the Complaint is clearly not a legitimate In any event, the current absence of use of the Domain Name does not substantiate a finding that the Respondent would be making a legitimate noncommercial or fair use of the Domain Name. Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely: (i) circumstances indicating that [the respondent has] registered or acquired [a disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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 trade mark 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 [the respondent’s] 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 circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith. The Domain Name is confusingly similar to the trade mark H&M of the Complainant and this cannot be a coincidence. The Complainant has produced evidence of the very significant global renown of the Complainant and its H&M trade mark including by reference to past decisions by previous panels under the Policy. In light of this and in the absence of evidence to the contrary, the Panel finds it inconceivable that the Respondent would not have been well aware of the Complainant and its trade mark at the time of registration of the Domain Name. This is even more likely given that the Domain Name was registered very recently and many years after the registration of the trade marks H&M listed in the Complaint. Moreover, the Domain Name was used to point to a page containing the Complainant’s H&M trade mark and logo which indicates that the Respondent’s selection of the Domain Name was not a coincidence. Thus, the Panel finds that the Domain Name was registered in bad faith. As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant (in particular Annex 11), the Panel is satisfied that the Domain Name is used in bad faith. Annex 11 to the Complaint shows that the Domain Name used to point to a page containing the highly recognizable Complainant’s H&M trade mark and logo and purporting to offer free vouchers and inviting Internet users to submit personal data. In the absence of evidence to the contrary the Panel is satisfied that the use of the Domain Name evidenced in Annex 11 to the Complaint constitutes a bad faith use and an attempt to mislead Internet users on the source, sponsorship, affiliation, or endorsement of the Respondent’s illegitimate website. Such past use of the Domain Name constitutes a threat hanging over the Complainant’s head that may not only be detrimental to the Complainant but could also put the Complainant’s current and potential customer at risk of fraud and deceit. Currently, the Domain Name appears to be passively held. Passive use itself does not cure the Respondent’s bad faith given the overall circumstances here, specifically the significant international renown of the Complainant’s trade mark. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 The fact that the Respondent chose not to respond to the Complainant’s cease and desist letter or to object to the Complainant’s assertions affirms the Panel’s view that the Domain Name is used in bad faith. Finally, this is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights. Thus, the Panel finds that the Domain Name is being used in bad faith. Accordingly, the Panel finds that the Domain Name was registered and is being used 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 Domain Name Vincent Denoyelle
“h-m” follows the same structure as the trade mark H&M with the letters “h” and “m” being connected by a special character, a hyphen (-) in the Domain Name instead of the ampersand in the Complainant’s trade mark. The ampersand is a special character that cannot be used as part of a domain name and thus the replacement of the special character “&” as a connector with “-“ as another connector does not dispel the confusing similarity between the Complainant’s trade mark and the Domain Name. Furthermore, recognizability of the Complainant’s trade mark is also confirmed by technological means as, when searching for the term “h-m” via Google, first results triggered relate to the trade mark H&M.
noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark of the Complainant.
Sole Panelist
Date: February 22, 2021
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