World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hermès International v. Yuuichirou Yamada / Stylebeet. Inc / DEEP Corporation

Case No. DSC2011-0001

1. The Parties

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

The Respondent is Yuuichirou Yamada / Stylebeet. Inc of Tokyo, Japan and DEEP Corporation of Tokyo, Japan, respectively (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <hermes.sc> (the “Domain Name”) is registered with GMO Internet, Inc. d/b/a Onamae.com WHOIS database (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2011. On May 6, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 9, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative contact.

On May 11, 2011, the Center transmitted an email communication to the parties in both English and Japanese regarding the language of the proceeding. On May 13, 2011, the Complainant confirmed its request that English be the language of the proceeding. The 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”), 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 May 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was stated to be June 6, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on June 7, 2011.

The Center appointed Haig Oghigian as the sole panelist in this matter on June 14, 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

As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.

The Complainant is a French fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery and luxury goods. The Complainant has been present in Japan, where the Respondent is located, since the 1970s, when the Complainant begun opening multiple locations outside of France, including locations all over Europe and the United States of America. The Complainant has never licensed any of its products and keeps tight control over the design and manufacture of its goods. Every Hermès product is made under the company’s name. The Complainant currently operates 50 stores in Japan, including 50 subsidiaries and 25 authorized dealers. The Complainant also offers its luxurious goods for sale online, through its official website available at “www.hermes.com”. The Complainant is the registered owner of numerous trademarks consisting of the word HERMÈS (the “HERMÈS Mark”) in and outside of France. For instance, the Complainant is the registered owner of the following trademarks, notably in force in France, the European Union and in Japan:

(i) HERMÈS, French nominative trademark No.1 558 350, registered on July 28, 1989, duly renewed and in force;

(ii) HERMÈS, European Community nominative trademark No. 0087772428, filed on December 1, 2009; and

(iii) HERMÈS, Japanese nominative trademark No. 1425637, registered on June 27, 1980, in force.

The Complainant is also using its trademark as its domain name to promote its activities, notably: <hermes.com> registered on November 24, 1997; <hermes.pro> registered on September 8, 2008; <hermes.asia> registered on February 14, 2008; <hermes.fr> registered on March 18, 1996; and <hermes.eu> registered on March 9, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred from the Respondent to the Complainant.

The Complainant argues that the Domain Name is identical or confusingly similar to its HERMÈS Mark because the Domain Name incorporates, in its entirety, the HERMÈS Mark. The addition of the ccTLD “.SC” does nothing to distinguish the Domain Name from the well-known HERMÈS Mark, which the Complainant has been using in numerous countries for over 170 years and intensively promoting in connection with high-end luxury products.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name as the Respondent fails to submit evidence that it has such rights or legitimate interests. The Respondent has, on the contrary, shown that it has neither rights nor legitimate interests in the Domain Name, given that it accepted to cease to sell Hermès’ goods and any use of the HERMÈS Mark on the website, following the Complainant’s cease and desist letter. The Complainant asserts that there exists no relationship between the Complainant and the Respondent which would give rise to any license, permission or authorization by which the Respondent could own or use the HERMÈS Mark, in the Domain Name or in any other connection, and that there is no evidence to suggest that the Respondent has been or is commonly known by the Domain Name. Further, the Complainant contends that the Respondent’s prior use of the Domain Name cannot be considered as fair or noncommercial use and cannot confer to the Respondent any rights in the HERMÈS Mark nor the right to register a domain name including a reproduction of the HERMÈS Mark.

The Complainant further claims that the Domain Name was registered and is being used in bad faith. It contends that the Respondent’s use of the Domain Name incorporating the Complainant’s trademark to sell unauthorized products and to falsely suggest a connection with the Complainant demonstrates that the Respondent was in bad faith. Further, the Complainant contends that the Respondent’s refusal to transfer the Domain Name and the offer for sale of the Domain Name to the Complainant after receiving the Complainant’s cease and desist letter evidences that the Respondent has registered the Domain Name in bad faith. The Complainant further contends that the Respondent is using the Domain Name to create confusion with the Complainant’s HERMÈS Mark, and is therefore using the Domain Name in bad faith.

B. Respondent

The Respondent did not submit a response to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to the trademark; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

It is noted that the language of the Registration Agreement is Japanese and the default language of the proceeding would have been Japanese. The Complainant asserts that English should be the language of the proceeding and the Respondent would not be prejudiced if English be the language of the proceeding.

On May 11, 2011, the Center notified the parties in both English and Japanese that the Complaint has been submitted in English, that the language of the Registration Agreement for the Domain Name is Japanese, and provided the parties with detailed information concerning the language of the proceeding. The Respondent was therefore aware of the language matters in the case and had an opportunity to make any comments or submissions if so wished, but it had not objected to the language of the proceeding at all by the due date.

Paragraph 11(a) of the Rules reserves the Panel the authority to determine the proper language of the proceeding. In view of all the above circumstances and the Complainant’s request, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Japanese language as the language of the proceeding in the present case would be a burden to the Complainant in terms of translation expenses, and would also cause undue delay to the proceedings.

The Panel is therefore satisfied that English should be selected as the language of the proceeding of this case, and shall therefore render the decision in English in accordance with paragraph 11 of the Rules.

Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the Domain Name

is identical with or confusingly similar to its trademark or service mark.

It is established that the inclusion of the top-level domain extension does not give any distinctive character to the domain name, since the use of a ccTLD is technically required to operate the domain names and it does not serve to identify the source of the goods or services provided by the registrant. See, Confédération Nationale du Crédit Mutuel and Crédit Industriel et Commercial S.A. v. Trabaja Jayam, Zeb Fi Tarmatek, WIPO Case No. DLC2009-0002.

Further, it is recognized that the incorporation of a trademark in its entirety is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.

It is clear on the given evidence that the Complainant has strong rights in the HERMÈS Mark based on its use of the trademark throughout the world for over 170 years.

Therefore, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s name and mark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:

- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Since the Complainant’s adoption and extensive use of the HERMÈS Mark predates the registration of the Domain Name, the burden is on the Respondent to establish its rights or legitimate interests in the Domain Name. See, PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cyberson, WIPO Case No. D2003-0174. The Panel finds that there is no evidence that suggests that the Respondent has rights or legitimate interests in the Domain Name.

There is no evidence to suggest that the Respondent has been or is commonly known by the Domain Name.

In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name, the HERMÈS Mark, or any mark confusingly similar thereto, as a domain name of for any other purpose.

Further, a third party has no right to use another’s trademark, in a domain name or indeed for any other commercial purpose, without express authorization from the owner of the trademark. See, C. Crane Company Inc. v. Robbie Crossley, WIPO Case No. D2009-0815. There is no evidence to suggest that the Respondent was given any authorization or permission to register or use the Domain Name.

The Respondent’s acceptance to cease the sale of Hermès’ goods and the use of the HERMÈS Mark on the website following the Complainant’s cease and desist letter suggests that it has no rights or legitimate interests in the Domain Name.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.

Registered and Used in Bad Faith

Given that the Respondent has never been authorized by the Complainant to use the HERMÈS Mark, and sell Hermès’ goods (set in a frame imprinted with the HERMÈS Mark) on its website, the very fact that the Respondent has registered the Domain Name establishes bad faith use and registration. See, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Furthermore, the Respondent’s refusal to transfer the Domain Name to the Complainant without valuable consideration also evidences bad faith. See, Advance Magazine Publishders Inc. v. Marcellod Russo, WIPO Case No. D2001-1049. The Panel acknowledges that the Domain Name is currently inactive. However, it is established that the passive holding of a domain name that incorporates a well-known trademark may also constitute the concept of a domain name “being used in bad faith”. See, Confédération Nationale du Crédit Mutuel v. Philippe Marie, WIPO Case No. D2010-1513. The Panel has little hesitation in finding that the Domain Name was registered and is being used in bad faith.

Therefore, the Panel is satisfied that the Complainant has established bad faith as required by paragraph 4(a)(iii).

7. Decision

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 <hermes.sc> be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Dated: June 28, 2011

 

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