World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hermès International v. Te Hao

Case No. D2011-0539

1. The Parties

The Complainant is Hermès International of Paris, France, represented by MEYER & Partenaires, France.

The Respondent is Te Hao of Shenzhen, Guangdong Province, the People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <hermespascher.com> and <hermessacspascher.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2011. On March 24, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 25, 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 March 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2011.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 5, 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 fashion house that was established in 1837 and that produces leather, ready-to-wear, lifestyle accessories, perfumery and luxury goods bearing the well-known trade mark HERMES. The Complainant conducts business throughout the world under the well-known HERMES brand (including Europe, the United States of America and the Asia Pacific). The Complainant has 16 Hermes stores in China, which is where the Respondent is located.

The Complainant is the owner of numerous trade marks incorporating the word HERMES throughout the world, including registrations in France, the European Union, China and Taiwan, Province of China, dating back to as early as 1956.

The Complainant is also the owner of numerous domain names incorporating the HERMES trade mark, including <hermes.com>, <hermes.pro>, <hermes.asia>, <hermes.fr> and <hermes.eu>.

The Respondent appears to be a resident of China. The Respondent registered the disputed domain names <hermespascher.com> and <hermessacspascher.com> (the "Disputed Domain Names") on February 17, 2011. At the date of filing the Complaint, the Disputed Domain Names both resolved to websites offering counterfeit Hermes goods for sale. Prior to filing the Complaint, the Complainant sent take down requests to the hosting company and the registrar of the Disputed Domain Names on the basis of copyright and trade mark infringement. As at the date of this decision, the Disputed Domain Names do not resolve to active websites. This is presumably as a result of the take down notices sent by the Complainant to the hosting company and the registrar of the Disputed Domain Names.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarised as follows:

a. The Disputed Domain Names are confusingly similar to the Complainant’s HERMES trade mark:

(i) In assessing the similarity between the trademark and the Disputed Domain Names, the gTld “.com” should be disregarded;

(ii) The Disputed Domain Names incorporate the Complainant’s HERMES trade mark in its entirety, which is sufficient to establish that the Disputed Domain Names are identical or confusingly similar to the Complainant’s mark; and

(iii) The addition of the generic French words “pas cher” and “sacs pas cher” (which refer to bags and in particular cheap bags) in the Disputed Domain Names does not eliminate the identity or at least the similarity between the Complainant’s registered and well-known trade mark and the Disputed Domain Names. French speaking Internet users are likely to use the words “pas cher” and “sacs pas cher” when looking for bags at low price.

b. The Respondent does not have rights or legitimate interests in the Disputed Domain Names:

(i) The Respondent is not currently and has never been known under the words “hermes”, “hermes pas cher” or “hermes sacs pas cher”, and does not have any trade mark registrations for HERMES in China;

(ii) The Respondent is not in any way related to the Complainant’s business and the Complainant has not licensed or authorized use of its trade mark by the Respondent; and

(ii) The fact that the Respondent used the Disputed Domain Names to sell counterfeit Hermes goods indicates the absence of any right or legitimate interest in the Disputed Domain Names.

c. The Disputed Domain Names were registered in bad faith and are being used in bad faith:

(i) The Complainant’s HERMES trade mark has a strong reputation and is widely known throughout the world including in China where the Respondent is apparently located. The Respondent could not ignore the existence of the Complainant’s well-known trade mark when registering the Disputed Domain Names;

(ii) The mere lack of right or legitimate interest of the Respondent in respect of the Disputed Domain Names indicates that the Disputed Domain Names have not been registered in good faith;

(iii) The Respondent has registered the Disputed Domain Names for the sole purpose of commercially benefiting from Internet traffic leading to its website in order to sell counterfeit Hermes goods;

(iv) The Disputed Domain Names are being used in bad faith because they are being used to offer counterfeit Hermes goods which might considerably damage the Complainant’s HERMES trade mark; and

(v) The purpose of registration of the Disputed Domain Names is to disrupt the Complainant’s business. Use of the HERMES trade mark in the Disputed Domain Names and on the Respondent’s websites and encouraging Internet users to buy fake Hermes goods should be considered as bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent did not submit a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complainant as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:

(i) the Disputed Domain Names are 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 Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in respect of the HERMES trade mark on the basis of its many registrations for the HERMES mark throughout the world, including in France, the European Union, China and Taiwan, Province of China.

It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case ”.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).

Each of the Disputed Domain Names incorporates the Complainant's HERMES mark in its entirety. The only difference between each of the Disputed Domain Names and the Complainant's HERMES mark is the inclusion of the French words "pas cher" and "sacs pas cher" (meaning "cheap" and "cheap bags" respectively) as descriptions. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088.

The Panel finds that "hermes" is the distinctive and prominent component of each of the Disputed Domain Names and the addition of the words "pas cher" and "sacs pas cher" does nothing to distinguish the Disputed Domain Names from the Complainant's trade mark. Given that the Complainant produces bags, the "sacs pas cher" component of the <hermessacspascher.com> Domain Name, if anything serves to increase the likelihood that consumers will be misled into thinking that the Domain Name is somehow associated with the Complainant.

The Panel accordingly finds that the Disputed Domain Names are confusingly similar to the HERMES mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Names. Therefore, the Panel will assess the Respondent's rights in the Disputed Domain Names (or lack thereof) based on the Respondent's use of the Disputed Domain Names in accordance with the available record.

The Panel accepts that the Complainant has not authorised the Respondent to use the HERMES trade mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Names.

Accordingly the only way for the Respondent to acquire rights or legitimate rights in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy would be through use of the Disputed Domain Names for legitimate noncommercial purposes or in connection with bona fide offerings of goods or services.

At the time of the Complaint was filed, the Disputed Domain Names resolved to websites that offered counterfeit Hermes bags for sale. Such use cannot constitute a bona fide offering of goods and services. See for example Cartier International, N.V., Cartier International , B.V. v. David Lee, WIPO Case No. D2009-1758; and Oakley Inc. v. Li Qi, WIPO Case No. D2010-0970.

The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names.

C. Registered and Used in Bad Faith

Evidence of bad faith includes actual or constructive notice of a well known trade mark at the time of registration of a domain name by a respondent. See Samsonite Corp. v. Colony Holding, NAF Case No. FA 94313. Given the high degree of fame of the HERMES trade mark throughout the world for many years at the time that the Disputed Domain Names were registered by the Respondent, as well as the fact that the websites to which the Disputed Domain Names resolved featured the Complainant's horse and carriage logo, the Panel accepts that the Respondent was aware of the Complainant's HERMES trade mark at the time of registering the Disputed Domain Names.

The Panel accepts that the Respondent registered the Disputed Domain Names for the sole purpose of creating confusion with the Complainant's well-known HERMES trade mark and benefitting from this confusion by selling counterfeit Hermes bags. The Panel accepts that this is clear evidence of bad faith on the part of the Respondent (see Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743; and TAG HEUER S.A. v. JBlumers Inc./Jerlad Blume, WIPO Case No. D2004-0871).

The Panel notes that the Disputed Domain Names do not currently resolve to active websites. However, it is likely that the websites were taken down as a result of the take down requests sent by the Complainant to the hosting company and the registrar, and the Panel considers it likely that the Respondent would still be using the Disputed Domain Names to operate the websites dealing in counterfeit Hermes goods had the Complainant not sent such take down requests to the hosting company and the registrar.

In the circumstances, the Panel finds that it is clear that the Respondent has registered and is using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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 Disputed Domain Names, <hermespascher.com> and <hermessacspascher.com>, be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Dated: May 11, 2011

 

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