WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International v. Fuzhoudongchen Tech Inc
Case No. D2011-0542
1. The Parties
Complainant is Hermes International of Paris, France, represented by MEYER & Partenaires, France.
Respondent is Fuzhoudongchen Tech Inc of Fuzhou, Fujian, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <hermes-online-store.com> and <hermesonlinestore.com> are registered with HiChina Zhicheng Technology Ltd.
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 HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On March 25, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 28, 2011, the Center transmitted an email communication to the parties regarding the language of the proceeding in both Chinese and English. On March 30, 2011, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding 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 Respondent of the Complaint, and the proceedings commenced on April 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 3, 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.
Regarding the language of the proceeding, paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. The language of the registration agreements for the disputed domain names is Chinese. Complainant filed arguments in support of English being recognized as the language of the proceeding, noting the English content of one of the websites demonstrates that Respondent has an understanding of this language. Because Respondent did not object by the deadline set by the Center, the Center initiated the administrative proceeding and sent all further communications to Respondent in the English and Chinese languages. The Center also invited Respondent to submit a response in the English or Chinese languages. In the circumstances, and given the lack of objection from Respondent to Complainant’s request that English be the language of the proceeding, the Panel will therefore proceed to render its decision in English.
4. Factual Background
Complainant Hermes International was established in 1837 and produces leather goods, clothing, footwear, watches, perfume, tableware, and jewelry, amongst other goods. Complainant owns registrations for its HERMES word and HERMES & Design trademarks (the “HERMES Trademarks”) in multiple jurisdictions including the European Community, the United States of America, and China. Complainant also owns multiple domain name registrations incorporating its HERMES word mark, including <hermes.com>, <hermes.pro>, <hermes.asia>, <hermes.fr>, and <hermes.eu>.
The disputed domain names were created on November 28, 2010. The registrant of the disputed domain names is identified as Fuzhoudongchen Tech Inc, Respondent in this proceeding. The registrar for the disputed domain names is identified as Hichina Zhicheng Technology Ltd. The <hermesonlinestore.com> disputed domain name offers goods for sale, specifically handbags, watches, and belts. Complainant’s HERMES Trademarks are featured in the graphics displayed at this domain, and Complainant’s HERMES word mark is featured in the names of the items for sale. No active content appears to have been featured at the other disputed domain name <hermes-online-store.com>.
5. Parties’ Contentions
Complainant claims that its HERMES Trademarks are widely recognized throughout the world in the fields of leather, lifestyle accessories, perfumery, and luxury goods. Complainant has provided details of its 16 retail stores operated under the Hermes name in China, Respondent’s country of residence. One of these locations serves as one of Complainant’s flagship boutiques, specifically a store in Shanghai, China. Complainant also claims to sell goods through its official website located at “www.hermes.com” and claims that its annual revenue for 2009 was around EUR 1.914 billion.
Complainant claims that the disputed domain names are confusingly similar to Complainant’s HERMES Trademarks and <hermes.com> domain name because they combine its trademark with generic terms. Complainant claims that the combination of its well-known trademark with generic terms to form a domain name is evidence of bad faith registration. Complainant also claims that the sole purpose of registration was to commercially benefit from Internet traffic. Complainant also maintains that Respondent has no rights or legitimate interests in and to the disputed domain names and must have been aware of Complainant when registering the disputed domain names given their incorporation of Complainant’s HERMES word mark in its entirety. Regarding the content of the website featured at “www.hermesonlinestore.com”, Complainant alleges that the items offered for sale are counterfeit products. The Complaint does not address the content of <hermes-online-store.com>.
Complainant claims to have submitted take down notices to the registrar of the disputed domain names claiming copyright violations and also claims to have submitted complaints regarding phishing attempts conducted on behalf of the disputed domain names. Complainant claims that Respondent is engaged in the practice of selling counterfeit luxury goods online and has cited sixteen (16) other domain names which it claims are registered to Respondent and infringe other third party trademarks.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence of prior rights in HERMES, specifically evidence of numerous trademark registrations for its HERMES Trademarks which pre-date the creation of the disputed domain names.
The disputed domain names <hermesonlinestore.com> and <hermes-online-store.com> are confusingly similar to Complainant’s HERMES Trademarks. Both domain names incorporate Complainant’s HERMES word mark in its entirety and add only the generic terms “online” and “store”. The disputed domain name <hermes-online-store.com> also incorporates hyphens separating Complainant’s HERMES word mark and the generic terms. Previous panels have held that similarly composed domain names were not sufficiently different from the trademarks at issue to avoid confusing similarity. See, e.g., United States Olympic Committee (USOC) v. Tri B-U-N Eco. Project, WIPO Case No. D2000-0435 (finding the combination of terms similar to trademark registrations held by a complainant with the words “online store” to be likely to cause confusion in a case involving the domain names <usaolympiconlinestore.com> and <olympiconlinestore.com>) and F. Hoffmann-La Roche AG v. Direct Privacy ID 9CCC6, WIPO Case No. D2010-0139 (finding that “’online-store.com’ are common, generic terms” which do not add distinctiveness in a decision finding confusing similarity between the TAMIFLU trademark and the domain name <tamiflu-online-store.com>).
Complainant maintains that Respondent is not licensed or otherwise authorized to conduct business on behalf of Hermes International. The use of the words “online” and “store” as they appear in the disputed domain names alongside Complainant’s HERMES word mark only serves to increase the likelihood that users accessing the websites will believe that they are authorized retail outlets of Complainant, thereby aggravating consumer confusion.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant owns registered trademark rights in China, the jurisdiction cited as Respondent’s country of residence in WhoIs reports for the disputed domain names. Specifically, Complainant owns registrations in China for its HERMES word mark covering leather goods, accessories, and clothing items in Classes 18 and 25 and a registration in China for its HERMES & Design trademark covering clothing items in Class 25. These trademarks were filed in 2005 and granted registration in 2009. As such, Complainant’s trademark rights in HERMES precede the creation of the disputed domain names on November 28, 2010.
There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s HERMES trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term “hermes”. As such, Complainant has made out its prima facie case, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that Respondent must have had knowledge of Complainant’s HERMES word mark when registering the disputed domain names <hermesonlinestore.com> and <hermes-online-store.com> given that both domain names incorporate Complainant’s distinctive HERMES word mark in its entirety. Furthermore, the content featured on the <hermesonlinestore.com> domain name supports the contention that Respondent is aware of the HERMES Trademarks, as the website features the HERMES Trademarks in its design and advertises goods identical to those sold by Complainant under the HERMES Trademarks.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. In this case, Respondent has registered two domain names consisting of Complainant’s distinctive HERMES trademark and the generic terms “online” and “store”. The <hermesonlinestore.com> domain name features Complainant’s HERMES Trademarks and offers goods for sale which are identical to the items offered by Complainant under its HERMES Trademarks. The incorporation of Complainant’s trademark in the disputed domain name and the use of Complainant’s HERMES Trademarks to offer goods identical to those provided by Complainant exhibits an intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. Continued use of the disputed domain name in this manner could lead consumers to mistakenly believe that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <hermes.com>, <hermes.pro>, <hermes.asia>, <hermes.fr>, and <hermes.eu> domain names. The <hermes-online-store.com> disputed domain name does not feature any active content, however there is no evidence in the record to indicate that Respondent has used this domain name or intends to use this domain name in connection with a bona fide offering of goods and services distinct from the goods provided by Complainant under the HERMES Trademarks. As established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of Respondent’s behavior are indicative of bad faith. In this case, Respondent’s registration of both disputed domain names was made in bad faith, and Respondent’s use of the disputed domain name <hermesonlinestore.com>certainly qualifies as bad faith use. The Panel believes that these factors combined with the lack of evidence in the record indicating that Respondent has used or intends to use the <hermes-online-store.com> disputed domain name for legitimate purposes supports a finding in favor of Complainant.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <hermes-online-store.com> and <hermesonlinestore.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: May 17, 2011