WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermès International v. Registrant : Boris Moser
Case No. D2011-0406
1. The Parties
Complainant is Hermès International of Paris, France, represented by MEYER & Partenaires, France.
Respondent is Registrant : Boris Moser of Aachen, Germany.
2. The Domain Name and Registrar
The disputed domain name <hermes.net> is registered with Domaingazelle.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 3, 2011, the Center transmitted by email to Domaingazelle.com LLC a request for registrar verification in connection with the disputed domain name. On March 7, 2011, Domaingazelle.com LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 30, 2011.
The Center appointed Dr. Bernhard Meyer as the sole panelist in this matter on April 1, 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 facts and statements appear from the Complaint and its annexes and have not been contested by Respondent:
Complainant, Hermès International, is a France based luxury goods manufacturer established in 1837. The company, along with its subsidiaries engages in the design, manufacture, marketing and retailing of luxury goods covering various sectors such as clothing, jewellery, fragrances and tableware. The products are available worldwide through a network of stores and online, through Complainant’s official website “www.hermes.com” and other similar domain names pointing to the official website. The company employs over 8,000 employees and in 2010 its revenue was around 2.5 billion Euros. Complainant owns various trademarks including the wording HERMÈS. Complainant alleges abusive registration and use of the disputed domain name and requests the transfer of this domain name to Complainant.
According to the information provided by the Registrar, Domaingazelle.com LLC, the current holder of the disputed domain name in the present case is Boris Moser. The disputed domain name <hermes.net> was created on September 18, 2010. The Panel has no knowledge whether Respondent holds a trademark. Nowadays, the disputed domain name does not resolve to a corresponding website but is linked to an article about the word “Hermes” on the online encyclopedia Wikipedia (“de.wikipedia.org/wiki/Hermes”).
5. Parties’ Contentions
Firstly, Complainant states that it is an internationally well-known company in the field of fashion and that it is the owner of the following three trademarks which have been continuously used in commerce since their registration:
- HERMÈS, French nominative trademark n° 1 558 350 of October 16, 1979, dully renewed (in force);
- HERMÈS, Community nominative trademark n° 008772428 of December 1, 2009 with effect in Germany where Respondent is located;
- HERMÈS, German nominative trademark n° 874885 of March 18, 1966 (in force).
Moreover, Complainant underlines to also have common law trademark rights since HERMÈS is a synonymous of luxury fashion and well known throughout the world.
Secondly, Complainant claims that the disputed domain name is identical to Complainant’s trademark. It is wholly reproducing letter-by-letter the mark HERMÈS. The suffix “.net” is not of distinguishing effect and must not be considered.
Thirdly, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent was never commonly known in the normal course of business by the disputed domain name. A trademark search before the Deutsches Patentamt conducted by Complainant did not reveal any trademark registration or pending application in the name of Respondent. Complainant did not give any authorization or permission to Respondent to register or to use the disputed domain name. To its filing, Complainant also attached a print-out of Respondent’s former website, showing that Respondent - at one time - was publishing third party sponsored links in the field of Complainant’s business, some of which even offered allegedly fake “Hermès” products. Complainant holds this to be clear evidence that Respondent’s primary intent was to trade off the famous trademark HERMÈS.
Fourthly, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent. Complainant alleges that it is highly unlikely that Respondent ignored the existence of Complainant’s famous trademark. According to Complainant, Respondent tries to attract the Internet users (e.g. by using the same color as on Complainant’s website) and divert Complainant’s customers while using the disputed domain name to promote third parties’ competing websites, for commercial gain. Furthermore, the disputed domain name has been offered for sale by Respondent to a representative of Complainant. Complainant’s investigations revealed that Respondent is holding more than 43,000 domain name registrations which leads Complainant to assume that Respondent is engaged in a cybersquatting/typosquatting activity.
Consequently, Complainant requires the transfer of the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
It is uncontested and supported by evidence that Complainant is the holder of three registered trademarks containing the word HERMÈS. The threshold requirement of having trademark rights is thus proven and it needs not be examined if Complainant also holds unregistered or common law trademark rights in HERMÈS.
The test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself in order to determine the likelihood of Internet user confusion. The relevant part of the disputed domain name”hermes” is obviously identical with Complainant’s trademark. The Panel agrees with Complainant that the top-level suffix ".net" in the disputed domain name may be disregarded under the test of confusing similarity as is a technical requirement of registration.
Taking the above into consideration, there is a risk that Internet users may actually believe that there is a connection between the disputed domain name and Complainant and/or its goods. Therefore the Panel holds that Complainant has established the first element of the Policy, paragraph 4(a).
B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent’s responsibility to prove otherwise.
There is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services (see paragraph 4c(i)), nor that it has been commonly known by the disputed domain name (see paragraph 4c(ii)), or that it is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue (see paragraph 4c(iii)).
Respondent fails to advance any allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Hence, Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4b(i) and (iv) of the Policy provide that the following situations, amongst others, evidence registration and use of the domain name in bad faith:
“Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name”; or
“By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or services on Respondent’s website or location”.
The Panel takes account of the following facts in making its decision in this regard:
Complainant's trademark was shown to be well-known and in wide use on the Internet, especially in Germany where Respondent is located. Respondent knew or should have known about the existence of Complainant's trademark at the time the disputed domain name was registered.
Today, the disputed domain name does no longer resolve to the website publishing third party sponsored links (print-out of which was attached to the Complaint). It is now linked to a Wikipedia page providing information about the Greek god “Hermes”. Considering the print-out provided by Complainant, it seems apparent, however, that the original intent of Respondent was to offer identical goods as Complainant’s (including “Hermès”-replicas) and that it was intended to mislead Internet users for commercial gain.
It may also reasonably be inferred from the high number and character of domain names registered by Respondent (e.g. <bradpit.de>; <photoshop.de>) that Respondent maintains a business of domain name speculation.
Finally, the fact that the disputed domain name has been offered for sale by Respondent to Complainant supports the finding that it was registered and used in bad faith.
Thus, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are sufficiently made out by Complainant.
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.net> be transferred to Complainant.
Dr. Bernhard F. Meyer
Dated: April 7, 2011