WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hermès International v. Whois privacy services provided by DomainProtect LLC / Domain Administrator, Internetconsult Ltd

Case No. D2011-2146

1. The Parties

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

The Respondent is Whois privacy services provided by DomainProtect LLC of Saint-Petersburg, Russian Federation and Domain Administrator, Internetconsult Ltd. of Saint-Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <herme.com> is registered with DomReg Ltd. d/b/a LIBRIS.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 5, 2012.

The Center verified that the Complaint together with the amended 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 January 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2012.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on February 9, 2012. 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 high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery and luxury goods.

The Complainant is the registered owner of a large number of trademarks consisting or including HERMÈS or H in France and abroad.

The Complainant is the registered owner of the trademarks, notably in force in France, in the European Union and in the Russian Federation, the country where the Respondent is domiciled:

- HERMÈS, French nominative trademark No. 1558350 of October 16, 1979

- HERMÈS + “attelage” logotype, international figurative trademark No. 429732 of March 16, 1977 (with effect notably in the Russian Federation)

- HERMÈS, Russian nominative trademark No. 96700390 of January 15, 1996

These trademarks have been continuously used in commerce since their registration.

The Complainant is using its trademark in domain names 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

<hermes.eu> registered on March 9, 2006.

The Respondent is located in Saint-Petersburg, the Russian Federation, according to the information provided by the concerned Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- its trademarks, which fall into the category of “famous marks” are well-known throughout the world (including in the Russian Federation) in the field of leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods;

- the disputed domain name is identical or confusingly similar to its marks, mainly as the domain name <herme.com> is wholly reproducing letter-by-letter its HERMÈS marks except for the last letter “s”;

- the Respondent has no rights or any legitimate interests in respect of the disputed domain name, as the Respondent is not currently and has never been known under the wordings HERMÈS;

- the Complainant has never given any authorization or permission to the Respondent to register or to use the disputed domain name;

- the Respondent is using the disputed domain name to operate a qualified parking page, publishing third party sponsored links, in the field of the Complainant’s business, some of which offer fake products of the Complainant;

- it is therefore obvious that the Respondent’s primary intent is to trade off the famous trademark HERMES;

- the Respondent is knowingly creating a likelihood of confusion between the respective websites, using the orange colour which is precisely the famous colour used by Complainant since the World War II when it was suffering from a lack of coloring;

- the disputed domain name is offered for sale by the Respondent;

- the strict reproduction of the HERMÈS marks in the disputed domain name cannot be placed on the account of fortuity;

- the above element in combination with the putting on sale by the Respondent of the disputed domain name the day of its registration represents evidence that the Respondent plainly registered the disputed domain name to use and adopt the Complainant’s well-known HERMÈS marks;

- the disputed domain name is used by the Respondent to operate a parking page where the Internet users can find numerous links to companies operating in the same business area as the Complainant: handbags, watches, jewellery, clothes. This parking page provides revenues to the Respondent, who is therefore trading off the reputation of the Complainant’s famous trademark;

- the qualified parking page operated from the disputed domain name is partly shaped with the orange colour, taking into account that the Complainant has been using this very specific colour, very rare in the field of the luxury industry, to pack its products for over 60 years;

- the choice of the orange colour by the Respondent, or even in case the parking page was designed by the registrar or the parking provider, the fact that the Respondent did not make the decision to remove such page demonstrates that the Respondent acts in bad faith while using the disputed domain name;

- relevant commercial links combined with the look and feel of the website may certainly create a risk of confusion in the consumers mind;

- the Respondent tries to attract the Internet users and divert the Complainant’s customers while using the disputed domain name to promote third parties competing websites, for commercial gain;

- the Respondent is apparently engaged in the business of domain name speculation, not only with generic domain names but also with domains names that are clearly cybersquatting or typosquatting trademark rights, and has been condemned in similar circumstances by the past;

- such circumstances represent clear indication that the Respondent is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The Complaint is in English language. The Registrar indicated that the language of the registration agreement for the disputed domain name indicated is Russian. As indicated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view of the UDRP panels is that the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the UDRP Rules. See in this sense Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados, WIPO Case No. D2003-0247 (transferring, <telsra.com>).

Considering the fact that a) the Complaint was filed in English b) the website, to which the disputed domain name resolves, is a parking page in English language, and c) the Respondent did not object to the use of English as the language of this proceeding, this Panel determines, in accordance with the Complainant’s request and paragraph 11(a) of the Rules, that the language of this administrative proceeding shall be English.

B. Identical or Confusingly Similar

It is the finding of this Panel that the Complainant has established its rights in the HERMÈS marks, from its long-standing use and trademark registrations for those marks around the world (including the Russian Federation where the Respondent is located). These rights predate by many years (and in the case of the HERMÈS marks, many decades) the registration date of the disputed domain name.

According to the paragraph 1.2 of the WIPO Overview 2.0, “the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, […] typically being regarded as insufficient to prevent threshold Internet user confusion”.

The disputed domain name reproduces letter-by-letter the HERMÈS marks of the Complainant except for the last letter “s”. The term “herme” is very similar to the HERMÈS marks in its visual impression. Pronunciation of the two terms is very similar. An Internet user or consumer viewing the term “herme” (or <herme.com>) is likely to confuse it with the mark HERMES (or the domain name <hermes.com>). The Complainant's mark HERMÈS is undoubtedly strong - it is immediately recognizable by the public - and this factor contributes to the confusing similarity. See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548.

Moreover, including the gTLD “.com” in the disputed domain name does nothing to distinguish it from the HERMÈS marks. See in this sense Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006.

For these reasons, the Panel finds the Complainant has established the first element of the Policy.

C. Rights or Legitimate Interests

According to the Complainant, the disputed domain name is used to operate a qualified parking page, publishing third party sponsored links in the field of the Complainant business.

The Complainant asserts that some of the links on the website under the disputed domain name offer fake products of the Complainant as they refer to the Complainant’s handbags. This assertion was not documented except for a capture of the website front page in which such links exit. The Panel has tried several times to access the website where the disputed domain name resolves to but failed. The assertion is not rebuted by the Respondent who failed to respond in this proceeding.

The Complainant asserts that the Respondent is not currently and has never been known by “hermes”.

The Complainant ascertains that the Respondent is not, in anyway, related to its business, is not one of its agents and does not carry out any activity for or has any business with the company.

The Complainant has never given any authorization or permission to the Respondent to register or to use the disputed domain name.

Moreover, the Complainant points out the fact that the Respondent is knowingly creating a likelihood of confusion between the respective websites, using the orange colour which is precisely the famous colour used by the Complainant since the World War II when it was suffering from a lack of colouring.

Furthermore, there is not any mention in the website about the Respondent’s relationship with the Complainant or, rather, about the absence of relationship.

Moreover, the Complainant observes that the disputed domain name is offered for sale by the Respondent.

At last, but not the least, given the content of the website and the contact details of the Respondent, which proved to be incorrect according to the records available in this proceeding, the Panel is persuaded of the fact that the Respondent must have known about the Complainant’s trademark at the time it registered the disputed domain name.

It is the opinion of the Panel, that the Complainant made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, which shifted the burden to the Respondent to show it has rights or legitimate interests in the disputed domain name. See, in this sense, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Respondent failed to rebut any such prima facie finding against it.

Therefore, the Panel considers that there is no evidence of the Respondent’s rights or legitimate interests in the disputed domain name and consequently the Panel finds that the Complainant has established the second element of the Policy.

D. Registered and Used in Bad Faith

It is no doubt that the Complainant demonstrated the worldwide reputation and goodwill related to the HERMÈS marks, as these trademarks are among the most famous trademarks in the world.

Therefore, the Panel agrees with the Complainant that it is highly unlikely that the Respondent ignored the existence of the Complainant and its famous trademarks in the field of leather goods, ready-to-wear, lifestyle accessories, perfumery goods, when the disputed domain name was registered.

As it results from the evidence produced by the Complainant, the disputed domain name is used by the Respondent to operate a parking page where the Internet users can find numerous links to companies operating in the same business area as the Complainant: handbags, watches, jewellery, clothes. It is very likely that this parking page provides revenues to the Respondent, who is therefore trading off the reputation of the Complainant’s famous trademarks.

Moreover, as the Complainant contends, the qualified parking page operated from the disputed domain name is partly shaped with the orange colour, and the Complainant has been using this very specific colour, very rare in the field of the luxury industry, to pack its products for over 60 years. The orange colour is present also on the Complainant’s website “www.hermes.com”

The Panel agrees with the Complainant that, relevant commercial links combined with the look and feel of the website may certainly create a risk of confusion in the consumers mind. From the evidence submitted, it is very likely that the Respondent tries to attract the Internet users and divert the Complainant's customers while using the disputed domain name to promote third parties competing websites, for commercial gain.

Considering all above, the Panel finds that the disputed domain name had been registered and is being used in bad faith and accordingly the third element of the Policy had been proven by the Complainant.

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 domain name <herme.com> be transferred to the Complainant

Beatrice Onica Jarka
Sole Panelist
Dated: February 23, 2012