WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H & M Hennes & Mauritz AB v. Simon Maufe, Akinsanya Odunayo Emmanuel and Nelson Rivaldo
Case No. D2014-0225
1. The Parties
The Complainant is H & M Hennes & Mauritz AB of Stockholm, Sweden, represented by Advokatfirman Lindahl, Sweden.
The Respondents are Simon Maufe, Akinsanya Odunayo Emmanuel and Nelson Rivaldo of Dubai, United Arab Emirates.
2. The Domain Names and Registrar
The disputed domain names <hmfranchisee.com> and <hmfranchising.com> (Disputed Domain Names) are registered with Network Solutions, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2014. On February 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on February 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 18, 2014.
The Center appointed Isabel Davies as the sole panelist in this matter on March 27, 2014. 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 owns registered trademarks comprising or including H&M in many countries around the world and their evidence shows that these date back well before the registration of the Disputed Domain Names.
The Complainant trades from the website “www.hm.com” as ampersands cannot be used.
5. Parties’ Contentions
A. The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights: (Policy, Paragraph 4ai); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
The Complainant is the proprietor of numerous trademark registrations covering a variety of countries including Europe and the United States of America, containing or consisting of the wording H&M dating from many years before the registration of the Disputed Domain Names.
The Complainant states that the Disputed Domain Names consist of two parts, the first being the characters “h” and “m”, the second being the word “franchisee” and “franchising” respectively. Franchising is defined as the right to sell a company’s goods or services in a particular area. A franchisee is defined as someone who has been given the right to sell a company’s goods or services in a particular area; someone who has been granted a franchise. The elements franchising and franchisee in the Disputed Domain Names therefore have a purely linguistic meaning that is interpreted in that sense by the beholder.
The Complainant further contends that the first part of the Disputed Domain Names, the characters “h” and “m” does not have a “linguistic meaning” and will therefore be considered the distinctive element of the Disputed Domain Names. At a pure visual comparison, the distinctive element of the Disputed Domain Names differs from the Complainant’s trademarks only by the absence of the ampersand symbol in the Disputed Domain Names. Since ampersands cannot be included in domain names, the distinctive part of the Disputed Domain Names must be considered nearly identical to the Complainant’s trademark rights at a visual comparison.
The Complainant also states that the same similarities are present in an aural comparison. However, account must also be taken to the fact that the ampersand in the Complainant’s trademarks is usually silent; the trademarks are pronounced “hm” on most markets, including the Complainant's native Sweden. The distinctive part of the Disputed Domain Names must therefore be considered nearly identical to the Complainant's trademarks at an aural comparison.
At a conceptual comparison, neither the distinctive part of the Disputed Domain Names nor the Complainant’s trademarks have a known linguistic meaning and will be regarded as made-up or coinedwords. In this sense, there is no conceptual dissimilarity.
The Complainant contends that account must also be taken of the fact that the Complainant is a famous manufacturer of fashion. Since it is not unusual in the fashion industry to conduct business through franchises, the element franchisee and franchising in the Disputed Domain Names will increase the similarity between the Complainant’s trademarks and the Disputed Domain Names.
Therefore the Complainant submits that, taking into account a global appreciation, the Disputed Domain Names must be considered confusingly similar to the Complainant's earlier rights.
B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names:
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The Complainant states that the Respondents registered the Disputed Domain Name <hmfranchisee.com> on August 14, 2013 and <hmfranchising.com> on November 11, 2013. Immediately after registering the Disputed Domain Names, the Respondents set up websites under the Disputed Domain Names which were clearly meant to convey the impression of being official sites of the Complainant. The websites contained the Complainant’s device mark and were, it avers, designed to trick the visitor into believing that the websites were official ways by which the Complainant enters into franchising agreements with third parties. Also, mail servers were set up under the Disputed Domain Names enabling the Respondents to communicate with third parties using email addresses of the format [name] @hmfranchisee.com and [name] @hmfranchising.com respectively.
Setting up email addresses with this format would it states, not have been possible if the Respondents had not been the proprietor of the Disputed Domain Names. Using the websites, the Respondents attracted third parties that were interested in entering into franchising agreements with the Complainant. Using the above email addresses, the Respondents communicated with the third parties, claiming to act as a franchising manager on behalf of the Complainant.
The Complainant has annexed evidence showing that the Respondents sent fabricated marketing material and documents with the intention of tricking third parties into believing that they would be authorized to set up a franchise business under the Complainant’s trademark. The Respondents requested that payment (licensing fees, deposits etc.) were paid in advance to a bank account registered in the name of Cliff Justice InternationalFZB. Third parties that had been in contact with the Respondent contacted the Complainant to confirm the validity of the Disputed Domain Names and the activities conducted.
The website under the Disputed Domain Name <hmfranchisee.com> has, the Complainant states, been removed at least since September 22, 2013. This is likely due to third parties that have asked the Complainant for confirmation of the validity of the Disputed Domain Name notifying the Respondents of the Complainant’s response, that the Disputed Domain Name is used to try to commit fraud.
The website under the Disputed Domain Name <hmfranchising.com> was live as of November 29, 2013. The Complainant contends that it is clear from the screenshots annexed to the Complaint that the website is designed with the sole purpose of committing fraud by taking advantage of the Complainant's trademark H&M and thereby tricking Internet users to enter into a fake franchising agreement with the Respondents. Not only does the website contain the Complainant’s trademark, but also texts copied from the Complainant’s official website as well as copyright protected images from the Complainant's spring and summer collection between the years 2010 and 2013.
The Complainant claims that, while no high quality screenshots have been secured from the domain name <hmfranchisee.com>, it is evident from the above as well as the evidence submitted, that the content at <hmfranchisee.com> was identical to the domain name <hmfranchising.com>. The evidence regarding hmfranchising.com must therefore be equally valid when evaluating <hmfranchisee.com>.
The Complainant avers that all of these violations - the registration of the Disputed Domain Names and the trademark and copyright infringements clearly show that the Respondents registered and used the Disputed Domain Names in bad faith with the purpose of committing fraud by infringing on the Complainant’s rights. The circumstances have apparently made a number of third parties question the validity of the Disputed Domain Names, but it is likely that a number of other confused third parties have chosen not to contact the Complainant.
The Complainant states that, regardless of whether the Respondents’ fraudulent behavior has generated any actual income, the Respondents’ intentions by registering and using the Disputed Domain Names are clear; to create a likelihood of confusion with the Complainant’s trademarks in order to attract Internet users for monetary gain.
C. The Disputed Domain Names were registered and is/are being used in bad faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Complainant states that by using the Complainant’s trademarks in the Disputed Domain Names as well as on the websites under the Disputed Domain Names, the Respondents have had the intention of creating a likelihood of confusion with the Complainant’s trademarks in order to attract Internet users interested in entering into a franchising agreement with the Complainant i.e., for commercial gain. The email servers under the Disputed Domain Names have in turn been used to communicate with the Internet users in order to try to deceive them into paying money to the Respondents.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Procedural matter
The Complaint has been brought against more than one Respondent. The Panel is satisfied that the Complainant has demonstrated that Respondents appear to be working together or to be false names for the same enterprise / person. Both Disputed Domain Names operate or have offered fraudulent alleged franchising opportunities to third parties, have the same content, and claiming to represent the Complainant. All these fraudulent alleged franchising opportunities, sent from email addresses under both Disputed Domain Names have been signed by the same person, a Mr. Nelson Rivaldo and contain references to the Disputed Domain Names in the email signature (as Annexed to the Complaint). It is therefore clear that the two Disputed Domain Names are controlled by the same person(s). The Policy establishes three elements, specified in paragraph 4(a), that must be established by the complainant to obtain relief. These elements are that:
(i) The Respondents Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Respondents Disputed Domain Names have been registered and are being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of, or requirement under, the Rules, including the respondent’s failure to file a response.
In the absence of a response, the Panel may also accept as true the factual allegations in the complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted. The Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of trademarks for and including H&M in many countries around the world dating from many years before the registration of the Disputed Domain Names and also that the Complainant trades from their website “www.hm.com”.
The Panel accepts that the distinctive element of the Disputed Domain Names is “hm” and that the lack of the ampersand does not affect the confusing similarity. The fact that the Complainant is a well-known fashion company and that franchising in the fashion business is common adds to the likelihood of confusion when the addition of descriptive words relating to franchising is the only other features of the Disputed Domain Names.
Removing the ampersand does not distinguish the Disputed Domain Names from the Complainant’s trademarks (Deloitte Touche Tohmatsu v. Robert Thorp, WIPO Case No. D2001-1431, finding that the elimination of the ampersand in the disputed domain name <deloittetouche.net> did not distinguish it from Complainant’s DELOITTE & TOUCHE Mark.
The Panel accepts that the Disputed Domain Names are confusingly similar to the Complainant’s Trademark.
B. Rights or Legitimate Interests
The Panel accepts that the Respondents have no rights or legitimate interests in the Disputed Domain Names.
The Respondents have not established rights or legitimate interests in the Disputed Domain Names and there is no indication that the Respondents are commonly known by the Disputed Domain Names and/or are using them in connection with a bona fide offering of goods or services. The Panel accepts that the Respondents are using the Disputed Domain Names to mislead potential franchisees into believing that they are offering legitimate franchises on behalf of the Complainant and to attempt to obtain money from them when the Complainant has not licensed or authorized the Respondents to represent them.
C. Registered and Used in Bad Faith
The Panel accepts that the Respondents could only have registered the Disputed Domain Names in bad faith as they had no entitlement to do this. The Panel also accepts that the Complainant has provided sufficient evidence to enable a finding of use in bad faith, from third parties who were misled by the Respondents into believing that they were dealing with an authorized representative of the Complainant when, in fact, the Respondents were trying to deceive them into paying money to the Respondents.
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, <hmfranchisee.com> and <hmfranchising.com> be transferred to the Complainant.
Date: April 10, 2014