WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermès International v. Luke - Walton Luke
Case No. D2011-1323
1. The Parties
The Complainant is Hermès International of France, represented by Meyer & Partenaires, France.
The Respondent is Luke - Walton Luke of Bhutan.
2. The Domain Name and Registrar
The disputed domain name <sachermesparis.com> (the “Disputed Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2011. The Complaint contains a request for English to be the language of the proceeding. On August 3, 2011, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the Disputed Domain Name. On August 4, 2011, Jiangsu Bangning Science & technology Co. Ltd. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint and the Complainant’s request for English to be the language of the proceeding, and the proceedings commenced on August 10, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 30, 2011. The Respondent did not submit any response. The Respondent also did not comment on the Complainant’s request for English to be the language of the proceeding. Accordingly, the Center notified the Respondent’s default on August 31, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 9, 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 high fashion house established in 1837 in France. 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. The Complainant does not license any of its products and keeps tight control over the design and manufacture of its products.
The Complainant has 8,000 employees around the world. In 2010, its revenue was about EUR 2.5 billion. The Asia Pacific region accounted for 43% of its group sales in 2009. By 2010, sales in Asia increased by 19%, propelled mainly by expansion in China, Macau and Hong Kong. The Complainant currently has 20 branches/stores in China with a world flagship boutique in Shanghai. The online purchase of products from around the world is also available via its official website at “www.hermes.com”.
The Complainant owns a large number of trade mark registrations comprising the word “hermes” around the world. Some of these are:
Jurisdiction Trade mark no Registration date
France 1558350 16 October 1979
CTM 008772428 1 December 2009
China 4932845 8 October 2005
In addition, the Complainant owns trade mark registrations for the following trade logo (the “Hermes Logo”):
Some of these are:
Jurisdiction Trade mark no Registration date
CTM 008772436 1 December 2009
United States of America 73494010 4 August 1984
International 196756 21 November 1956
The Hermes Logo is also displayed prominently on the Complainant’s official website.
The Disputed Domain Name was registered on June 22, 2011 and at the time of the Complaint resolved to a website at “www.sachermesparis.com”. The website offered products for sale under the trade mark HERMES. A variation of the Hermes Logo (with the word HERMES enlarged and an additional word PARIS under it) is also displayed prominently on the top left corner.
Beyond the WhoIs information associated with the Disputed Domain Name and the website resolved therefrom, no further information on the Respondent is available.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Name is identical to the Complainant’s trade mark and reproduces the trade mark HERMES in its entirety. The Disputed Domain Name includes the descriptive French word “sac” refers to a specific product of the Complainant and the geographical word “paris” which refers to the Complainant’s headquarter location. These additional words do not eliminate the similarity between the Disputed Domain Name and the Complainant’s trade mark;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has never been known by HERMES or SACHERMESPARIS. The Respondent is not related to the Complainant and is not the Complainant’s agent and does not have any business with the Complainant. The Complainant has never authorized or permitted the Respondent to register or use the Disputed Domain Name.
3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent must have been aware of the well-known HERMES trade mark of the Complainant. The Respondent registered the Disputed Domain Name for the sole purpose of commercially benefiting from Internet traffic arriving at its website, which enables Internet users to purchase counterfeit HERMES products. The website offers counterfeit products for sale and could cause considerable damage to the Complainant’s rights and legitimate business interests. The Respondent has communicated false Who-Is details. In particular, the word “Antalent” does not correspond to a real street or city in Bhutan. The Respondent has registered and is using the Disputed Domain Name in order to create confusion with the Complainant’s trade mark HERMES.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
The default language of the proceeding is Chinese as the registration agreement is in Chinese. The Complainant has requested for English to be the language of the proceeding. Having reviewed the circumstances, the Panel agrees that English shall be the language of the proceeding for the following reasons:
1) The Complainant is a French company and is not able to communicate in Chinese;
2) Conducting the proceeding in Chinese will cause undue delay in the proceeding and substantial cost to the Complainant;
3) The website resolved from the Disputed Domain Name is totally in English, which indicates that the Respondent is able to communicate in English;
4) The Respondent has an English name “Luke/Walton Luke” which strongly suggests that the Respondent must be more conversant in English than Chinese;
5) The Complaint has already been submitted in English and the Respondent has chosen not to participate in the proceeding;
6) The Respondent did not object to English being the language of proceeding; and
7) No benefit may foreseeably be gained by insisting that Chinese be the language of the proceeding.
Having determined that English shall be the language of the proceeding, the Panel proceeds to consider whether the Complainant has successfully established the three limbs of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has rights in the trade mark HERMES in view of its many registrations around the world. The Disputed Domain Name incorporates the words “hermes” in its entirety. The only differences between the Disputed Domain Name and the Complainant’s trade mark HERMES are the existence of the prefix “sac” and the suffix “paris” in the Disputed Domain Name.
The Panel accepts the Complainant’s submission that “sac” is descriptive of bags and pouches which form part of the Complainant’s range of products. The Respondent is clearly aware of this descriptive meaning as the website resolved from the Disputed Domain Name offers bags for sale online. In relation to the suffix “paris”, this is an obvious geographical reference which does not assist to distinguish the Disputed Domain Name from the trade mark HERMES.
It is a consistent view of past UDRP panel decisions that descriptive prefixes and suffixes added to a domain name which incorporates a trade mark in its entirety generally do not serve to distinguish the domain name from the trade mark. The Panel holds that the Disputed Domain Name is confusingly similar to the trade mark HERMES. The first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant has confirmed that it has no relationship with the Respondent and has not authorized the Respondent to use and/or register the trade mark HERMES as the Disputed Domain Name. The Respondent is an individual whose name is not “sachermesparis” and there is no evidence to indicate that the Respondent is commonly known by this name. The only reasonable conclusion that may be formed from the available facts is that the Respondent is aware of the Complainant’s trade mark HERMES and has registered the Disputed Domain Name to associate with the same for commercial benefit. Such action cannot be regarded as acceptable fair use which gives rise to rights or legitimate interests of the Respondent pursuant to the Policy.
In the circumstances, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Since the Respondent did not file a Response, the prima facie case has not been rebutted and the Panel finds for the Complainant in relation to the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence submitted, the Panel accepts that the trade mark HERMES is a well-known mark. This conclusion has also been reached by prior UDRP panels (e.g., Hermes International v Registrant : Boris Moser, WIPO Case No. D2011-0406). Further, the Respondent has adopted the Complainant’s trade mark, including the Hermes Logo, on the website resolved from the Disputed Domain Name. As such, it is inconceivable that the Respondent was not aware of the trade mark HERMES at the time of registering the Disputed Domain Name.
Paragraph 4(b)(iv) of the Policy specifically highlights the following example of bad faith registration and use:
“by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”
Whether commercial benefit was the sole purpose for the Respondent registering the Disputed Domain Name, it is an inescapable conclusion from the available evidence that the Respondent must have had an intention to attract Internet users to the website resolved from the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s trade mark HERMES for commercial gain. That commercial gain was a key objective is evident from the offering of goods for sale on the website. The website is also dressed up with the Hermes Logo and other uses of the trade mark HERMES. A reasonable visitor to the website will likely be confused and misled.
The Complainant alleges that the website offers counterfeit products for sale. The available evidence is not sufficient for the Panel to form such a conclusion. However, this is a serious allegation and any reasonable person who is falsely accused in the position of the Respondent is unlikely to sit idly by. It is therefore disconcerting that the Respondent has not responded to the Complaint. The Panel hereby draws an adverse inference that the Respondent is unable to defend against the Complainant’s allegation.
Further, the Panel agrees with the Complainant that the contact particulars provided by the Respondent for registration of the Disputed Domain Name is highly suspect. The Complainant submitted that there is no real street or city in Bhutan by the name “Antalent”. The Panel also noted the Respondent’s address of “Antalent Antalent antalent 298331”, which appears to be fictitious. The Panel is of the view that the Respondent has failed to discharge the duty to act honestly (discussed in various past UDRP panel decisions, e.g., Luxottica Group S.p.A., Luxottica Fashion Brillen Vertriebs GmbH v. Rett Walters, WIPO Case No. D2011-0297).
Taking all the factors highlighted above into consideration, the Panel holds that the Disputed Domain Name was registered and is being used in bad faith by the Respondent.
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 Name, <sachermesparis.com> be transferred to the Complainant.
Kar Liang Soh
Dated: September 30, 2011