WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International v. Jack Yong
Case No. D2017-1959
1. The Parties
The Complainant is Hermes International of Paris, France, represented by AARPI Scan Avocats, France.
The Respondent is Jack Yong of Bari, Italy.
2. The Domain Name and Registrar
The disputed domain name <hermesclub.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2017. On October 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2017, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 10, 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
The Complainant is a fashion house located in Paris, France. It is a supplier of leather, ready-to-wear clothing, lifestyle accessories, perfumery and luxury goods.
The Complainant is the owner of various registrations which comprise or contain the mark HERMES. These registrations include:
- European Union Trade Mark number 008772428 for the word mark HERMÈS, registered on April 2, 2012 for numerous classes of goods and services.
- French trademark number 1700925 for a semi-figurative mark comprising the words HERMÈS CLUB and a horse and carriage logo, filed on February 7, 1989 in Class 3.
The disputed domain name was registered on June 17, 2013.
Based on the evidence available to the Panel, the disputed domain name has at all material times resolved to a website at “www.hermesclub.net” which includes a neutral background, a green button design with the words “website coming soon” and the additional wording “Please check back soon to see if the site is available.”
5. Parties’ Contentions
The Complainant submits that it is a well-known, high-end fashion house which is recognized for its silk scarves and other products. It states that it has an annual turnover of over EUR 5 billion and employs over 12,000 people worldwide. The Complainant refers to its trademark registrations, including those mentioned above, and states that it also owns domain names including <hermes.com> and <hermes.net> and operates an official website at “www.hermes.com”.
The Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It submits that the dominant portion of the disputed domain name is the term “hermes”, which is identical to its trademark HERMÈS, and that the addition of the generic term “club” is not effective to distinguish the disputed domain name from the Complainant’s mark. On the contrary, the Complainant argues that the disputed domain name could be assumed to denote to a club relating to the Complainant’s brand. The Complainant also relies on its trademark HERMÈS CLUB and argues that Internet users are likely to assume that the disputed domain name is operated by the Complainant or under its authorization.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has never been known by the name “Hermes” and has no trademark registrations to that effect. The Complainant states that it has no connection with the Respondent and has never licensed or authorized it to use its HERMÈS marks. The Complainant further submits that the Respondent’s use of the disputed domain name as a “passive holding” cannot give rise to any legitimate rights or interests in that name on the part of the Respondent.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant asserts that because its mark HERMÈS is widely known, there is a presumption that the Respondent registered the disputed domain name in the knowledge of that mark and with the intention of taking unfair advantage of it. The Complainant states that its trademarks HERMÈS and HERMÈS CLUB had been registered for many years prior to the registration of the disputed domain name and asserts that the Respondent is likely to have intended the disputed domain name to refer to the Complainant’s trademarks. The Complainant claims in particular that, by registering the disputed domain name, the Respondent has deprived the Complainant of registering a strategic domain name that contains its trademark.
The Complainant refers to the Respondent’s passive use of the disputed domain name and contends that this can constitute bad faith in all the circumstances of the case. The Complainant also submits that the Respondent has provided false contact details in connection with the registration of the disputed domain name. The Complainant provides evidence of attempts to communicate with the Respondent both by letter and by email to the addresses shown in the relevant WhoIs search: the letter was returned by the postal service on the basis that the address was non-existent and the email bounced back with a “mailbox unavailable” message.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the 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.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the word mark HERMÈS and the semi-figurative trademark HERMÈS CLUB. The disputed domain name is <hermesclub.net> which in the view of the Panel is essentially identical to the second of the Complainant’s trademarks and similar to the first, in that the dictionary term “club” is not effective to distinguish the disputed domain name from the Complainant’s trademark. In the circumstances the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration or use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. The Panel having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
In order to establish bad faith for the purposes of the Policy, the Complainant must establish in essence that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name and that it did so in order unfairly to target the goodwill attaching to that trademark.
In this case, the Panel accepts that the Complainant’s trademark HERMÈS is widely known. However, the name “Hermes” refers originally to a god in Greek mythology and the Panel finds that that name is not the exclusive province of the Complainant, either in popular usage or in commerce. It does not, therefore, follow that the Respondent must inevitably have registered the disputed domain name in order to target the Complainant’s trademark.
In assessing the case overall, however, the Panel has regard to a number of additional factors. One such factor is that the Complainant owns the semi-figurative trademark HERMÈS CLUB, the textual part of which is essentially identical to the disputed domain name. Secondly, the Panel accepts that the Respondent appears to have provided false contact details in connection with the registration: while there are a number of reasons why an email might be rejected, the fact of a non-existent postal address is difficult to explain. Thirdly, by failing to participate in this proceeding, the Respondent has volunteered no submissions or evidence that might dispel the Complainant’s allegations that the Respondent has acted in bad faith.
The Panel also finds that the “passive holding” of a domain name does not preclude a finding of bad faith when the overall circumstances of the case point to that conclusion (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In all the circumstances of the case, and on balance, the Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith, namely, in the knowledge of the Complainant’s trademarks and with the intention of unfairly targeting the Complainant’s goodwill in those trademarks.
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 <hermesclub.net> be transferred to the Complainant.
Steven A. Maier
Date: November 21, 2017