WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International, SCA v. cui zhenhua
Case No. D2010-1743
1. The Parties
The Complainant is Hermes International, SCA of Paris, France, represented by Cabinet Iteanu & Associes, France.
The Respondent is cui zhenhua of Guangzhou, the People’s Public of China.
2. The Domain Name and Registrar
The disputed domain name <hermes-handbag.com> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2010. On October 14, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On October 15, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 15, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 October 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2010.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on November 23, 2010. 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 the French Company HERMES INTERNATIONAL, SCA, who is the holding company of the internationally known Hermès Group, founded in 1837, which designs, develops and markets high-quality products, including bags, leather goods, jewellery, etc.
The Hermes products are distributed worldwide through about 325 retail stores. Hermes is especially recognised worldwide for its handmade luggage and handbags collections. The brand HERMES is internationally known, and associated with luxury products and excellence of craftsmanship. The independent report Best Global Brands 2010, published by Interbrand, cites HERMES as one of the most internationally known brands.
The Complainant registered HERMES trademark in France, Unite States of America, China and many other countries in the world. The Complainant provided with related trademark certificates and documents to prove its trademark rights.
The Complainant is also the registrant of several domain names incorporating its trademarks such as:
- <hermes.com> registered on November 24, 1997;
- <hermes-international.com> registered on November 28, 2002;
- <hermes.fr> registered on March, 18, 1996;
- <hermes.cn> registered on March, 19, 2003.
The disputed domain name was registered on September 19, 2009. The website at the disputed domain name has been used by the Respondent to offer for sale replica bags, belts and scarf products under the Complainant’s registered mark HERMES.
5. Parties’ Contentions
5.1 The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant identifies itself as the owner of internationally well-known trademarks all over the world. The trademark HERMES is the only distinctive element in the terms composing the disputed domain name. The additional term "handbag" is not a distinguishing feature but increases the likelihood of confusion because it refers expressly to the Complainant's most well-known type of products.
5.2 The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant has never authorized the Respondent to use its trademark. The Respondent is not commonly known by the disputed domain name and has not acquired any trademark or service mark rights. The Respondent cannot demonstrate any legitimate non-commercial or fair use of the disputed domain name.
5.3 The disputed domain name has been registered and is being used in bad faith
It is obvious that the Respondent knew the trademark HERMES at the time it registered the disputed domain name.
The registration of the domain name was made with the obvious intention to use it to promote an e-commerce website selling counterfeit trademarked goods.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
It is noted that the language of the registration agreement for the disputed domain name is Chinese and the default language of proceedings would have been Chinese. The Complainant asserts that English should be the language of proceedings and the Respondent would not be prejudiced if the English language is the proceedings language. The Complainant mainly relies on the following arguments with references to prior UDRP decisions to support the request:
(1) The Respondent provides an e-commerce website under the disputed domain name, for selling handbags shipped and delivered worldwide. It is evident that the main language of communication for the Respondent involved in this international activity is English;
(2) From contents of the web pages, it is obvious that the Respondent has no real intention to sell products to the Chinese market, and that the website only creates an appearance of being bilingual, and that all useful information contained in the site is in English language;
(3) The only currencies supported by the e-commerce site are US Dollars, Euro, GB Pounds, Canadian Dollars, Australian Dollars, excluding Chinese currency. It is evident that the site is not intended for Chinese customers.
In addition to the arguments and views canvassed by the Complainant, the Panel notes that:
on October 15, 2010, the Center notified the parties in both English and Chinese that the Complaint had been submitted in English, that the language of the registration agreement for the disputed domain name is Chinese, and provided the parties with detailed information concerning the language of proceedings. The Respondent was therefore aware of the language of proceedings matters in the case and had an opportunity to make any comments or submissions it so wished, but it had not objected to the language of proceedings at all by the due date.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred, the possibility of delay in the proceeding in the event translations are required, and other relevant factors. See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989. And it is recognized that the UDRP should provide an inexpensive and expeditious avenue for resolution of domain name disputes. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
Paragraph 11(a) of the Rules reserves to the Panel the authority to determine the proper language of proceedings. In view of all the above circumstances and the Complainant’s request, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Chinese language as the language of proceedings in the present case would be a burden to the Complainant in terms of translation expenses, and would also cause undue delay in the proceedings.
The Panel determines that English shall be the language of proceedings and therefore render the decision in English in accordance with paragraph 11 of the Rules.
6.2 The Panel’s decision in relation to the disputed domain name
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel 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
Based on the documents produced by the Complainant, the Panel is satisfied that the Complainant has proven that it is the owner of the trademark HERMES.
The distinctive part of the disputed domain name is the HERMES mark. The disputed domain name wholly incorporates the Complainant’s distinctive trademark HERMES. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark may be sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042.
The Panel finds that the addition of generic, dictionary term “handbag” in the disputed domain name does not prevent confusing similarity to the Complainant’s trademark, and therefore that the disputed domain name is confusingly similar to the Complainant’s trademark, in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark HERMES.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name. The Respondent cannot demonstrate any legitimate non-commercial or fair use of the disputed domain name.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. According to a consistent line of UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
It is noted that the Respondent has failed to file a Response to prove its rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. For all the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Through extensive marketing and advertising efforts, the Complainant has established significant goodwill and reputation in its mark.
The evidence shows that the website at the disputed domain name was being used by the Respondent to offer for sale replica Hermes products. The Panel notes, that the website is still able to visit when drafting the decision. In “ABOUNT US” column, it is said that “Our company specializes in replicating designer hermes handbags” with detailed introduction about how it is able to produce replica trademarked products and claimed Hermes Replica Handbags as “the art of cloning”. These prove strongly that the Respondent was fully aware of the Complainant’s trademarks and business, and the disputed domain name was registered in bad faith.
The Complainant has asserted that the website which was operated at the disputed domain name was used by the Respondent to offer for the sale counterfeit Hermes branded products and this assertion has not been rebutted by the Respondent. Moreover, the Respondent claims its products as replica trademarked products on the website under the disputed domain name. The sale of counterfeited goods under the Complainant’s trademark amounts to bad faith. See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.
The Panel finds that by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product or service on the Respondent’s website or location.
In light of the above reasons, the Panel therefore finds that the disputed domain name has been registered and is being used in bad faith pursuant to the Policy.
For all 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 <hermes-handbag.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Date: December 13, 2010