WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International v. ufe ndi
Case No. D2010-2285
1. The Parties
The Complainant is Hermes International of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is ufe ndi of Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hermesell.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2010. On December 29, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 29, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2011.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on February 7, 2011. 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is a French high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery and luxury goods.
4.2 The Hermès family settled in France in 1828. In 1837, Thierry Hermès first established Hermès as a harness workshop where he created wrought harnesses and bridles for the carriage trade. Charles-Émile Hermès took over management from his father and moved the shop in 1880 to its current location at 24 Rue Faubourg Saint-Honoré. With the aid of sons Adolphe and Émile-Maurice Hermès, the company catered to the elite of Europe, North Africa, Asia, and the Americas and by the late 1950s, the Hermès logo had reached renowned status.
4.3 In 1976, the Complainant restructured itself as a holding company and continued with its expansion efforts worldwide.
4.4 The Complainant celebrated its 150th anniversary in 1987 and by June 1993, the Complainant had gone public on the Paris Bourse (stock exchange).
4.5 As of 2008, the Complainant has 14 product divisions encompassing leather, scarves, ties, menswear, women's fashion, perfume, watches, stationery, footwear, gloves, enamel, decorative arts, tableware and jewellery. Sales are made up of about 30% leather goods, 15% clothes and 12% scarves. The Complainant has never licensed any of its products and keeps tight control over the design and manufacture of its vast range of goods. High quality is a hallmark of the products produced under the HERMES trademark.
4.6 The Complainant’s revenue is approximately 1.914 billion euros (2009) and it employs more than 8,000 employees.
4.7 The Complainant also offers for sale its luxurious goods online, through its official website located at “www.hermes.com”.
4.8 The Complainant is the registered owner of a substantial number of trademarks consisting or including the word “Hermes” in France and abroad. Amongst other jurisdictions, the Complainant is the registered owner of the following trademarks, in France, the European Union, the United States and the Peoples’ Republic of China:
HERMES, French nominative trademark No. 1 558 350 of October 16, 1979
HERMES, Community nominative trademark No. 008772428 of December 1, 2009
HERMES, American nominative trademark No. 2213940 of May 15, 1997
HERMES, American nominative trademark No. 368785 of March 1, 1939
HERMES, Chinese nominative trademark No. 4932845 of October 8, 2005
HERMES, Chinese nominative trademark No. 4933050 of October 8, 2005
HERMES & carriage design, French device trademark No. 1 377 454 of November 30, 1976
HERMES & carriage design, Community device trademark No. 008772436 of December 1, 2009
HERMES & carriage design, American device trademark No. 883588 of December 20, 1967
HERMES & carriage design, Chinese device trademark No. 4933036 of October 8, 2005
HERMES, International nominative trademark No. 196756 of November 21, 1956
These trademarks have been continuously used in commerce since their registration.
4.9 The Complainant also uses its HERMES trademark as a domain name to promote its activities.
These domain names include:
<hermes.com> registered on November 24, 1997
<hermes.pro> registered on September 8, 2008
<hermes.asia> registered on February 14, 2008
<hermes.fr> registered on March 18, 1996
<hermes.eu> registered on March 9, 2006
All of these domain names are redirected to the official website of the Complainant at “www.hermes.com”.
4.10 The Complainant states that the HERMES trademark falls into the category of a “famous mark” as it is well known throughout the world (including in China, where the Respondent is apparently located) for leather goods, ready-to-wear, lifestyle accessories, perfumery, and luxury goods.
4.11 The Respondent offers for sale on the website comprising the disputed domain name, counterfeit or unauthorized imitations of goods that bear the HERMES trademark.
4.12 The Respondent is also apparently located in the United States of America where the Complainant has 54 points of sale and trademark rights. Seemingly, the address provided by the Respondent is inaccurate as there is no location known as Los Angel (which presumably refers to Los Angeles which is located in California and not Florida).
5. Parties’ Contentions
5.1 The Complainant contends that it has rights to the HERMES trademark and that the disputed domain name <hermesell.com> is identical or confusingly similar to the Complainant’s HERMES trademark. The disputed domain name comprises of the Complainant’s HERMES trademark in its entirety and the additional letters “ell” which, when read as a whole, reads as “HERMES Sell”. This seeks to draw the Internet user to the belief that it is a website operated by the Complainant which sells HERMES branded products.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name because:
(a) the Respondent is not currently and has never been known as “hermes”, “sell” or “hermesell”.
(b) the Respondent is not, in any way, related to the Complainant’s business, is not one of its agents and does not carry out any activity for or has any business with the Complainant. The Complainant has not licensed or authorized the Respondent in any way.
(c) the Complainant’s goods are sold throughout the world, including China, through self-owned stores whereas the Respondent is using the disputed domain name to sell counterfeit or unauthorised imitations of Hermes products in the absence of any rights or legitimate interests.
(d) the Complainant has never given any authorization or permission to the Respondent to register or to use the disputed domain name.
5.3 In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(a) the Respondent was aware of the existence of the Complainant’s trademark as HERMES is a well-known trademark worldwide including the United Sates of America.
(b) the Respondent registered the disputed domain name for the sole purpose of commercially benefitting from Internet traffic arriving at its website, which enable the Internet users to purchase counterfeit or unauthorized imitations of Hermes products at low prices (at a discount of more than 50%).
(c) through the websites, the Respondent is offering for sale counterfeit or unauthorized imitations of products that bear the Complainant’s HERMES trademark which could cause considerable damage to the Complainant’s rights and its legitimate business interests.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
6.1. Identical or Confusingly Similar Trademark
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademark HERMES. The trademark is not only registered by the Complainant in numerous jurisdictions but it has also been used extensively by the Complainant and its group of companies on a worldwide basis for more than 170 years.
The disputed domain name comprises the Complainant’s HERMES trademark in its entirety with the additional letters “ell”. These additional letters do not by themselves, make the domain name distinctive in character. The disputed domain name, when read as a whole, reads as “HERMES Sell” which refers to a point of sale for HERMES branded products. These additional letters describe the character, functions or features of the website that resolves from the disputed domain name. The distinctive feature of the disputed domain name remains the HERMES trademark (see Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743 (<hermes-handbag.com>)).
In Moncler S.r.l v. Mr. Zhuo Muniao, WIPO Case No. D2009-1330 (<monclersales.com>), it was held that “[t]he domain name wholly consists of the [c]omplainant’s trademark and trade name MONCLER to which a generic word “sales” is added. The [p]anel holds, in line with the principle established by numerous prior decisions of UDRP panels [...] that the addition of a generic term does not negate the confusing similarity between the domain name and the trade mark. The [p]anel concludes that the [r]espondent’s domain name is confusingly similar to the [c]omplainant’s trademarks”.
As such the Panel finds that the disputed domain name is confusingly similar to the Complainant’s HERMES trademark for the purpose of the Policy.
6.2. Rights or Legitimate Interests in the Domain Name
The Complainant’s assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the disputed domain name. There was also no evidence to indicate that the Respondent was known by the name “hermes”, “sell”, or “hermesell”.
The Complainant has adduced sufficient evidence that the disputed domain name is being used solely for commercial gain. The website located at <hermesell.com> indicates that the Respondent is using the website to promote the sale of counterfeit or unauthorized imitations of the Complainant’s products at a significant discount to original or authorised HERMES branded products.
The Complainant further confirms that the Respondent has not been authorised to sell the Complainant’s products or to use the HERMES trademark. In Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743 (<hermes-handbag.com>), it was held that “[t]he Complainant has not authorized, licensed or permitted the [r]espondent to use the trademark HERMES. The Complainant asserts that the [r]espondent is not commonly known by the disputed domain name […]. The [p]anel therefore finds that the [r]espondent has no rights or legitimate interests in respect of the disputed domain name” (see also Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038 (<dior-bag.com>)).
The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant lead the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could find not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3. Registration and Use in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s HERMES trademark when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was only as recent as 2010 when compared to the date when the Complainant started using the HERMES trademark and the “www.hermes.com” website, the widespread use of the HERMES trademark by the Complainant at a global level and the fact that the Respondent was openly selling counterfeit or unauthorized imitations of the Complainant’s products through its website.
In Balenciaga v. liu zhixian, WIPO Case No. D2010-1831 (<balenciaga-bags.com>), the panel took into account the fact that the respondent was selling counterfeit bags in determining bad faith. The panel held that “…the [r]espondent must have had the [c]omplainant’s notorious trademark in mind when he registered the [d]omain [n]ame, as evidenced in particular by the use to which the [d]omain [n]ame has been put [“sale of counterfeit bags”]. In view of the [p]anel’s finding that the [r]espondent has no rights or legitimate interests in the [d]omain [n]ame, it follows that the [d]omain [n]ame was registered in bad faith”.
Similarly, in Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743 (<hermes-handbag.com>), the panel found that the respondent was offering for sale counterfeit goods through the website under the disputed domain name. In this regard the panel held that “[t]he Complainant has asserted that the website which was operated at the disputed domain name was used by the [r]espondent to offer for sale counterfeit Hermes branded products and this assertion has not been rebutted by the [r]espondent. Moreover, the [r]espondent 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. The [p]anel finds that by using the disputed domain name, the [r]espondent intentionally attempted to attract for commercial gain Internet users to the [r]espondent’s website […]. The [p]anel therefore finds that the disputed domain name has been registered and is being used in bad faith”.
The Panel is satisfied that the Respondent had knowledge of the reputation and goodwill of the HERMES trademark when it sought to register the disputed domain name and it intended to use and indeed used the disputed domain name to sell counterfeit or unauthorised imitations of the Complainant’s Hermes products. As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of 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, <hermesell.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: February 21, 2011