WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International v. BAG12, Nick Kim
Case No. D2010-2290
1. The Parties
The Complainant is Hermes International of France, represented by MEYER & Partenaires, France.
The Respondent is BAG12, Nick Kim of Armenia.
2. The Domain Name and Registrar
The disputed domain name <hermesbirkinbags.org> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2010. On January 4, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 5, 2011, 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 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2011.
The Center appointed Anna Carabelli as the sole panelist in this matter on February 4, 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 Complainant is a French high fashion house established in 1837, manufacturing and selling leather goods, clothing, accessories, perfumery, jewellery, tableware, and other luxury goods under the trademark HERMES.
The mark is protected as a registered trademark in France and in many other countries; annexed to the Complaint are copies of several national, international and community trademark registrations for HERMES filed by the Complainant (see annexes E 1-11).
HERMES products are renowned for the use of high quality materials and hand-craftsmanship. They are sold worldwide, including in the United States (“US”), through self-owned stores and online through the Complainant’s official website “www.hermes.com” (see Annex D to the Complaint).
The Complainant also owns other domain names (Annex F to the Complaint) incorporating the HERMES trademark, all pointing to the Complainant’s official website.
In 1984, the Complainant created the “Birkin Bag”, which is a handmade purse named after the actress and singer Jane Birkin. The Birkin Bag is one of the most popular bags in the fashion industry and among the public. It is distributed in the HERMES boutiques in limited quantities.
BIRKIN is also a trademark registered by the Complainant for the Birkin Bag (see Annex E12-13 to the Complaint).
The disputed domain name was registered on June 11, 2010 as shown by a copy of the Registrar’s WhoIs database annexed to the Complaint. The Respondent is apparently located in the US (in El Paso, Texas). although the personal information in the WhoIs database are inaccurate since El Paso, Texas, is located in the US, not in Armenia as indicated in the WhoIs.
According to the evidence submitted by the Complainant, the disputed domain name resolves to a website offering for sale HERMES branded products at prices (in US dollars) that are considerably lower than those of original HERMES products (see annex G to the Complaint). The Panel notes that the disputed domain name presently directs users to a webpage having no content and showing the message “This site is currently unavailable”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its registered trademarks HERMES and BIRKIN since it wholly reproduces these marks letter by letter. The Complainant argues that the non-distinctive domain name suffix <.org> does not give any distinctive character to the domain name. In this connection the Complainant refers to previous WIPO UDRP decisions stating the principle that the gTLD extension should not be taken into consideration when evaluating the identity or similarity between the disputed domain name and a complainant’s trademark.
The Complainant also contends that the addition of the generic term “bags” does not eliminate the identity or the similarity but on the contrary strengthens the confusion between the disputed domain name and the Complainant’s trademark HERMES because of the direct relation with the Complainant’s specific product Birkin Bag and the Complainant’s business.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has not authorized it to use the HERMES mark. The Respondent is using the disputed domain name to sell counterfeit HERMES goods as suggested by the fact that HERMES branded products displayed on the Respondent’s website are offered at prices (in US dollars) that are considerably lower than those of original HERMES products.
The Complainant states that the disputed domain name was registered and used in bad faith given that: (a) the Respondent could not ignore the existence of the Complainant when the domain name was registered given the strong reputation and the distinctive character of the Complainant’s marks HERMES and BIRKIN worldwide and in the US where the Respondent is located, and (b) the Respondent is using the domain name to offer for sale counterfeited HERMES goods causing considerable damage to the Complainant’s trademark rights and business, to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
In addition, based on the contact information registered in the WhoIs database, the Complainant believes that the Respondent has given inaccurate and incomplete contact details, which fact has been held by previous panels as evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the mark HERMES and BIRKIN in several countries including the US.
The disputed domain name is confusingly similar to the Complainant’s trademarks, as it entirely incorporates HERMES and BIRKIN and the suffix <.org> has no legal significance when comparing domain names. On the other hand the addition of generic terms or numbers does not create a different trademark in which the respondent has rights, and cannot be considered sufficient to avoid confusion between the domain name and the complainant's trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).
On this issue the Panel further notices that the term “bags” can likely be associated with the Complainant's business and products, therefore the combination with “Hermes” and “Birkin” clearly is confusing (Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038; Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743).
Accordingly the Panel finds that the Complainant has established the element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademarks HERMES and BIRKIN.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the Respondent is using the disputed domain name to sell counterfeit HERMES goods.
In the light of the above, the Complainant has established prima facie evidence that none of the three circumstances establishing rights or legitimate interests mentioned above applies. As stressed in many WIPO UDRP decisions, in such a case the burden of proof 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).
Because the Respondent failed to submit a response to the Complaint, and given that the allegations of the Complaint prima facie do not raise substantial doubts, the Panelist accepts as true all allegations set forth in the Complaint and holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly the Panel finds that the Complainant has established the element under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Through extensive marketing and advertising efforts, the Complainant has established significant goodwill and reputation in its marks (Hermes International, SCA v. cui zhenhua, supra).
Given the international reputation of the HERMES mark and of the HERMES branded products, including the “Birkin Bag”, the Panel finds that in all likelihood the Respondent should have been aware of the Complainant’s well-known trademarks at the time it registered the disputed domain name (see Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071; Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Hermes International, SCA v. cui zhenhua, supra).
The evidence shows that the website at the disputed domain name was being used by the Respondent to offer for sale HERMES branded products at prices that are considerably lower than the original HERMES products. The Complainant has asserted that this fact suggests that the products offered on the Respondent’s website are counterfeit Hermes branded products and this assertion has not been rebutted by the Respondent.
The sale of counterfeit goods under the Complainant’s trademark amounts to bad faith (See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019; Hermes International, SCA v. cui zhenhua, supra).
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 online location, by creating a likelihood of confusion with the Complainant’s marks 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.
The fact that the Respondent’s website was not active when the decision was drafted, does not affect the above conclusions. The Panel finds that the lack of active use of a domain name does not as such prevent a finding of bad faith in this case. A panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith and in this Panel’s view, the circumstances of the present case (namely: strong reputation and distinctiveness of the Complainant’s trademarks and goods, no response to the Complaint, the improbability of conceiving a good faith use of the disputed domain name) clearly show the Respondent’s bad faith.
Accordingly the Panel finds that the Complainant has established the element under paragraph 4(a)(iii) 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 domain name <hermesbirkinbags.org> be transferred to the Complainant.
Dated: February 18, 2011