WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H & M Hennes & Mauritz AB v. Whois Privacy Protection Service, Inc. / Dvl Den
Case No. D2016-2474
1. The Parties
Complainant is H & M Hennes & Mauritz AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Dvl Den of Belgrade, Serbia1 .
2. The Domain Name and Registrar
The disputed domain name <hm.gifts> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2016. On December 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 8, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 9, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2017.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 18, 2017. 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
Complainant is a company organized under the laws of Sweden which is active worldwide in the fashion business.
Complainant has provided evidence that it is the owner of numerous registered trademarks worldwide relating to the “H&M” brand, inter alia, the following, which predate the registration of the disputed domain name and which also cover the territory of Serbia:
- Word-/device mark H&M, World Intellectual Property Organization (WIPO), Registration No. 1102244, Registration Date: August 16, 2011, Status: Active;
- Word mark H&M, European Union Intellectual Property Office (EUIPO), Registration No. 000984781, Registration Date: February 15, 2000, Status: Active;
- Word-/device mark H&M, United States Patent and Trademark Office (USPTO), Registration No. 3992496, Registration Date: July 12, 2011, Status: Active.
Moreover, Complainant has evidenced to be the owner of numerous domain names relating to the H&M trademark, inter alia, <hm.com> created on November 13, 1997 as well as <hmgiftcard.com> created on April 1, 2008; these domain names both redirect to Complainant’s main website at “www.hm.com” promoting Complainant’s business and products, such as the H&M gift card.
Respondent is apparently residing in Serbia. The disputed domain name <hm.gifts> was created on September 22, 2016. By the time of the rendering of this decision, it resolves to a website at “www.hm.gifts” which displays the H&M logotype as a banner along the website’s topline stating that the visitor is the winner of a H&M gift card worth EUR 250. The visitor is directed from there to a website at “www.desktop.my-price.de” promoting a gift card of the PRIMARK company, which belongs to Complainant’s direct competitors on the fashion market.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to be one of the world’s leading fashion companies with a total of 4,200 stores in 64 markets and 23 online-markets. Its H&M gift cards can be used for shopping in any store and at “www.hm.com” and are easy to purchase online or in a physical H&M shop. Complainant also purports to be listed with the website at “www.rankingthebrands.com” as the 20th most valuable brand in the world.
Complainant submits that the disputed domain name is at least confusingly similar to Complainant’s H&M trademark as it incorporates the latter in its entirety with the addition of the new generic Top-Level Domain (gTLD) “.gifts” which even exaggerates the confusing similarity between the disputed domain name and Complainant’s H&M trademark in so far as Complainant is offering H&M gift cards for sale.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Respondent is using the disputed domain name to introduce consumers into visiting the related website under “www.hm.gifts” from where visitors are redirected to a third party website promoting Complainant’s direct competitor’s PRIMARK brand which does not constitute a bona fide offering of goods or services and (2) Respondent is collecting sensitive visitors’ personal data by requesting information such as name and email address in an attempt to phish for personal information, which neither qualifies as a bona fide nor as a legitimate noncommercial or fair use of the disputed domain name.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Complainant’s H&M trademark which clearly predates the registration of the disputed domain name is so widely used and well-known worldwide that it is unlikely that Respondent was not aware of it at the time of the disputed domain name’s registration, (2) the website to which the disputed domain name redirects displays Complainant’s H&M logotype as a banner along the website’s topline which generates a misleading impression of a legitimate association between the disputed domain name and Complainant for financial gain, whereas in reality no such connection exists, and which, therefore, amounts to a use of the disputed domain name in bad faith and, finally, (3) Respondent made use of a privacy shield and also failed to respond both to a notice of infringement letter sent to Respondent on October 25, 2016 as well as to a reminder sent to Respondent on November 3, 2016.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <hm.gifts> is confusingly similar to the H&M trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the H&M trademark in its entirety, except the omission of the ampersand. It has become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2), that the application of the confusing similarity test under the UDRP would typically involve a straight forward visual or oral comparison of the concerned trademark with the alphanumeric string in the disputed domain name and that the test is satisfied if the relevant trademark would generally be recognizable as such therein. Against this background, it must be found that Complainant’s trademark H&M is easily recognizable as such in the disputed domain name <hm.gifts>, which, in turn, results in a finding of confusing similarity. Moreover, numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). The existence of the gTLD “.gifts” is not at all in contrast to such finding as the term “gifts” in turn refers to a relevant product offered by Complainant, namely the so-called H&M gift card and, therefore, is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s H&M trademark in the disputed domain name.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent apparently has not been authorized to use Complainant’s H&M trademark, neither as a domain name nor in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with that name.
The disputed domain name rather redirects to a commercial website at “www.hm.gifts” which not only displays Complainant’s H&M logotype, but also induces visitors to be forwarded from there to a further website promoting Complainant’s direct competitor’s PRIMARK brand. Such use of the disputed domain name neither confers rights or legitimate interests therein as part of a bona fide offering of goods or services nor as a legitimate noncommercial or fair use without intent for commercial gain.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, however, Respondent did not reply at all to Complainant’s allegations, neither as they were included in the pre-procedural communication of October 25, 2016 as well as of November 3, 2016 nor as they were included in the Complaint duly notified to Respondent by the Center on December 16, 2016.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Looking at the website at “www.hm.gifts” to which the disputed domain name redirects, leaves little if no doubt to the Panel that Respondent was aware of Complainant’s H&M trademark when registering the disputed domain name. The respective website clearly displays Complainant’s H&M logotype and even redirects visitors to a further website displaying the PRIMARK brand which is in direct competition with Complainant’s H&M brand. The aim of such website apparently is to collect visitors’ personal data such as name and email address in a fraudulent manner. The Panel, therefore, has no difficulty in finding that by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with Complainant’s H&M trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of a product or services thereon. Such circumstances, however, shall be evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a WhoIs privacy shield apparently in an attempt to conceal his true identity, but also provided false WhoIs contact information, since the delivery of the notification of the Complaint sent to Respondent via DHL on November 16, 2016 failed due to an apparent invalid postal address. This fact at least throws a light at Respondent’s behavior which supports the conclusion of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <hm.gifts> be transferred to Complainant.
Stephanie G. Hartung
Date: January 31, 2017
1 It is evident from the case file that WhoIs Privacy Protection Service, Inc. of Kirkland, Washington, United States of America is a privacy protection service and that Dvl Den of Belgrade, Serbia, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.