WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International SA v. Domain by Proxy LLC
Case No. D2017-1966
1. The Parties
The Complainant is Hermes International SA of Paris, France, represented by AARPI Scan Avocats, France.
The Respondent is Domain by Proxy LLC of Scottsdale, Arizona, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <hermesclub.com> 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 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2017, 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. On October 13, 2017, the Center transmitted by email to the Registrar a request for confirmation of the blank WhoIs information. On October 13, 2017, the Registrar transmitted by email to the Center its confirmation response disclosing blank information and was never updated by the Registrar's customer. The Center sent an email communication to the Complainant on October 18, 2017, in this regard and the Complainant did not submit an amendment to the Complaint.
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 November 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 22, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 29, 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 Hermes International, a French high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods. The Complainant had a turnover of around EUR 5.202 billion in 2016 and employs about 12,834 people globally.
The Complainant has registered nearly 100 trademarks throughout the world, including:
- HERMES, French nominative trade mark filed on October 16, 1979, No. 1558350;
- HERMES, United States nominative trade mark filed on March 1, 1939, No. 0368785; and
- HERMES, International nominative trade mark filed on November 21, 1956, No. 196756,
The Complainant is the owner also of the French Trademark Number 1700925 for a semi-figurative trademark 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 2, 2011.
Based on the evidence available to the Panel, the disputed domain name is not currently active.
5. Parties' Contentions
The Complainant's contentions are as follows:
- The Complainant is the registered owner of numerous trademarks HERMES;
- HERMES INTERNATIONAL's trademarks are well-known worldwide;
- The disputed domain name is confusingly similar to the Complainant's HERMES well-known trademarks because it reproduces letter-by-letter those trademarks;
- The Respondent has merely added the generic term "club" as a suffix to the Complainant's well-known trademarks, which does not grant the disputed domain name with self-distinctiveness;
The combination of this term with the well-known trademarks HERMES into the disputed domain name may confuse the Internet users who may believe that the disputed domain name is used by the Complainant or with its authorization.
With respect to rights or legitimate interests in the disputed domain name, the Complainant states that:
- The Respondent is not commonly known by the domain name as no business nor any trademark was registered by the Respondent under the names "HERMES" or "HERMESCLUB";
- The Complainant did not authorize the Respondent to use its HERMES trademarks;
- The Respondent is not in any way related to the Complainant's activities;
The Respondent has no rights or legitimate interests arising from a bona fide offering of goods and services or from a legitimate noncommercial or faire use of the disputed domain name as the disputed domain name resolves to an inactive website and, to the Complainant's best knowledge, has never been used in connection with a dedicated website.
With respect to bad faith registration and use, the Complainant states that:
- It is highly likely that the Respondent knew of the Complainant's HERMES trademarks when he registered the disputed domain name;
- Registration by the Respondent, who has no connection with the Complainant strongly, supports registration in bad faith;
- The fact that the Respondent used a privacy service to register the disputed domain name in order to conceal identity suggests a registration in bad faith;
- Passive holding of the disputed domain name by the Respondent indicates that Respondent intends to derive profit from the Complainant's reputation;
- The disputed domain name used to resolve to a website displaying sponsored links relating to the Complainant's business and the Complainant's trademarks which clearly indicates that the Respondent intends to derive profit from the Complainant's reputation.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in HERMES and HERMÈS CLUB as evidenced by the trademark registrations included in the Complaint, as mentioned above.
The Panel is also prepared to find that the disputed domain name <hermesclub.com> is identical to the Complainant's trademark HERMÈS CLUB.
The lack of tilde in the disputed domain name does not alter this conclusion since confusion still remains between the HERMES trademark and the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the domain name or to use the trademarks.
The Complainant has prior rights in the trademarks which precede the Respondent's registration of the domain name by several years.
The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden of production to the Respondent to rebut this presumption. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regard to the Respondent's registration and use of the disputed domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Complainant's trademarks are famous, and have evidently been known to the Respondent when registering the disputed domain name. Said disputed domain name is highly unlikely to have been registered if it were not for the Complainant's trademarks. In this respect, see Hermes International v. Jack Yong, WIPO Case No. D2017-1959.
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 has not provided contact details in connection with the registration: the verification response explained that the disputed domain name transferred in with the blank information and was never updated by the customer (See Response by the Registrar GoDaddy on October 13, 2017).
The failure of the Respondent to answer the Complainant's Complaint and take any part in these proceedings also suggests in combination with other factors bad faith on the part of the Respondent (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210). The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name in bad faith.
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.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: December 13, 2017