WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International v. Yang Fen
Case No. D2010-2272
1. The Parties
The Complainant is Hermes International of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Yang Fen of Guangzhou, Guangdong, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <hermes-celeb.com> and <store-hermes.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2010. On December 28, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On the same day, 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 January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2011.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on February 7, 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is a French high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery and luxury goods.
4.2 The Hermès family settled in France in 1828. In 1837, Thierry Hermès first established Hermès as a harness workshop where he created wrought harnesses and bridles for the carriage trade. Charles-Émile Hermès took over management from his father and moved the shop in 1880 to its current location at 24 Rue Faubourg Saint-Honoré. With the aid of sons Adolphe and Émile-Maurice Hermès, the company catered to the elite of Europe, North Africa, Asia, and the Americas and by the late 1950s, the Hermès logo had reached renowned status.
4.3 In 1976, the Complainant restructured itself as a holding company and continued with its expansion efforts worldwide.
4.4 The Complainant celebrated its 150th anniversary in 1987 and by June 1993, the Complainant had gone public on the Paris Bourse (stock exchange).
4.5 As of 2008, 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. Sales are made up of about 30% leather goods, 15% clothes and 12% scarves. The Complainant has never licensed any of its products and keeps tight control over the design and manufacture of its vast range of goods. High quality is a hallmark of the products produced under the HERMES trademark.
4.6 The Complainant’s revenue is approximately EUR 1.914 billion (2009) and it employs more than 8,000 employees.
4.7 In 2009, the Asia-Pacific region generated 43% of the Complainant’s sales. It delivered revenues of EUR 831 million, rising by 7% at constant exchange rates and by 13% in the retail sector.
4.8 The Complainant also offers for sale its luxurious goods online, through its official website located at “www.hermes.com”.
4.9 The Complainant is the registered owner of a substantial number of trademarks consisting or including the word “Hermes” in France and abroad. Amongst other jurisdictions, the Complainant is the registered owner of the following trademarks, in France, the European Union, the United States and the People’s Republic of China:
HERMES, French nominative trademark No. 1558350 of October 16, 1979
HERMES, Community nominative trademark No. 008772428 of December 1, 2009
HERMES, American nominative trademark No. 2213940 of May 15, 1997
HERMES, American nominative trademark No. 368785 of March 1, 1939
HERMES, Chinese nominative trademark No. 4932845 of October 8, 2005
HERMES, Chinese nominative trademark No. 4933050 of October 8, 2005
HERMES & carriage device, trademark No. 1377454 of November 30, 1976
HERMES & carriage device, Community trademark No. 008772436 of December 1, 2009
HERMES & carriage device, trademark No. 883588 of December 20, 1967
HERMES & carriage device, Chinese trademark No. 4933036 of October 8, 2005
HERMES, International nominative trademark No. 196756 of November 21, 1956
These trademarks have been continuously used in commerce since their registrations.
4.10 The Complainant also uses its HERMES trademark as a domain name to promote its activities. These domain names include:
<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
All of these domain names are redirected to the official website of the Complainant at “www.hermes.com”.
4.11 The Complainant states the HERMES trademark, falls into the category of a “famous mark” as it is well-known throughout the world (including in China, where the Respondent is apparently located) for leather goods, ready-to-wear, lifestyle accessories, perfumery, and luxury goods.
4.12 The Respondent offers for sale on the website comprising the disputed domain names, counterfeit or unauthorized imitations of goods that bear the HERMES trademark.
5. Parties’ Contentions
5.1 The Complainant contends that it has rights to the HERMES trademark and that the disputed domain names <hermes-celeb.com> and <store-hermes.com> are identical or confusingly similar to the Complainant’s HERMES trademark. The disputed domain names comprise of the Complainant’s HERMES trademark in its entirety and additional words which are generic and non-distinctive.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain names because:
(a) the Respondent is not currently and has never been known as “hermes”, or “store hermes” or “hermes celeb”.
(b) the Respondent is not, in anyway, related to the Complainant’s business, is not one of its agents and does not carry out any activity for or has any business with the Complainant. The Complainant has not licensed or authorized the Respondent in any way.
(c) the Complainant’s goods are sold throughout the world, including China, through self-owned stores whereas the Respondent is using the disputed domain names to sell counterfeit or unauthorised imitations of Hermes products in the absence of any rights or legitimate interests.
(d) the Complainant has never given any authorization or permission to the Respondent to register or to use the disputed domain names.
5.3 In relation to the requirement of bad faith registration and use of the disputed domain names, the Complainant contends as follows:
(a) the Respondent was aware of the existence of the Complainant’s trademark as HERMES is a well-known trademark worldwide including in China.
(b) the Respondent registered the dispute domain names for the sole purpose of commercially benefitting from Internet traffic arriving at its websites, which enable the Internet users to purchase counterfeit or unauthorized imitations of Hermes products at low prices.
(c) through the websites, the Respondent is offering for sale counterfeit or unauthorized imitations of products that bear the Complainant’s HERMES trademark which could cause considerable damage to the Complainant’s rights and its legitimate business interests.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(c) that the disputed domain names have been registered and are being used in bad faith.
6.1 Identical or Confusingly Similar to the Trademark
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademark HERMES. The trademark is not only registered by the Complainant in numerous jurisdictions but it has also been used extensively by the Complainant and its group of companies on a worldwide basis for more than 170 years.
The disputed domain names comprise the Complainant’s HERMES trademark in its entirety with the additional words “store” and “celeb”. These additional words are not distinctive. The word “store” refers to a point of sale and the word “celeb” is an abbreviation of the word “celebrity”. These additional words describe the character, functions or features of the websites that resolve from the disputed domain names. The distinctive feature of the disputed domain names remain the HERMES trademark (see Hermes International SCA v. cui zhenhua, WIPO Case No. D2010-1743).
Two previous panel decisions had dealt with the issue of domain names that comprised of a trademark and the generic terms “store” and “celebrity”. In BACCARAT SA v. Alain Lim, WIPO Case No. D2009-1446, it was held that the addition of the word “store” was insufficient to create a distinction from the complainant's trademark and that it merely referred to a point of sale. In such instance, the addition of the term did not minimize the risk of confusion between the disputed domain name and the complainant's trademark, but on the contrary, strengthened it. In Playboy Enterprises International Inc. v. Roger Banning, WIPO Case No. D2006-1542, where one of the disputed domain names was <playboymobilecelebrities.com>, the panel also made a similar finding and found that the disputed domain name was confusingly similar to the complainant’s PLAYBOY trademark.
As such the Panel finds that the disputed domain names are confusingly similar to the Complainant's HERMES trademark for the purpose of the Policy.
6.2. Rights or Legitimate Interests in the Disputed Domain Name
The Complainant’s assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the disputed domain names. There was also no evidence to indicate that the Respondent was known by the name “hermes” or “store hermes” or “hermes celeb”.
The Complainant has adduced sufficient evidence that the disputed domain names are being used solely for commercial gain. The websites located at <store-hermes.com> and <hermes-celeb.com> appear to indicate that the Respondent is using the websites to promote the sale of counterfeit or unauthorized imitations of the Complainant’s products.
The Complainant further confirms that the Respondent has not been authorised to sell the Complainant’s products or to use the HERMES trademark. In Hermes International SCA v. cui zhenhua, supra, it was held that “[t]he Complainant has not authorized, licensed or permitted the Respondent to use the trademark HERMES. The Complainant asserts that the Respondent is not commonly known by the disputed domain name [. . .]. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name” (see also Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038).
The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant lead the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain names.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3. Registration and Use in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s HERMES trademark when it registered and started using the disputed domain names. The factors that were taken into account to arrive at this conclusion include the dates of registration of the disputed domain names which were only as recent as 2010 compared to the date when the Complainant started using the HERMES trademark and the <hermes.com> website, the widespread use of the HERMES trademark by the Complainant at a global level, and the fact that the Respondent was openly selling counterfeit or unauthorized imitations of the Complainant’s products through its websites.
In Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831, the panel took into account the fact that the respondent was selling counterfeit bags in determining bad faith. The panel held that
“…the Respondent must have had the Complainant’s notorious trademark in mind when he registered the domain name, as evidenced in particular by the use to which the domain name has been put (‘sale of counterfeit bags’). In view of the Panel’s finding that the Respondent has no rights or legitimate interests in the domain name, it follows that the domain name was registered in bad faith”.
Similarly, in Hermes International SCA v. cui zhenhua, supra, the panel found that the respondent was offering for sale counterfeit goods through the website at the disputed domain name. In this regard the panel held that.
“[t]he Complainant has asserted that the website which was operated at the disputed domain name was used by the Respondent to offer for sale counterfeit HERMES branded products and this assertion has not been rebutted by the Respondent. Moreover, the Respondent claims its products as replica trademarked products on the website under the disputed domain name. The sale of counterfeited goods under the Complainant’s trademark amounts to bad faith. The Panel finds that by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website [. . .]. The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith”.
The Panel is satisfied that the Respondent had knowledge of the reputation and goodwill of the HERMES trademark when it sought to register the disputed domain names and it intended to use and indeed used these disputed domain names to sell counterfeit or unauthorised imitations of the Complainants’ Hermes products. As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
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 names, <hermes-celeb.com> and <store-hermes.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: February 18, 2011