WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HACKETT, S.A.R.L. v. Mika Harms, Hackett Shop UK
Case No. D2017-2114
1. The Parties
The Complainant is HACKETT, S.A.R.L. of Luxembourg, represented by UBILIBET, Spain.
The Respondent is Mika Harms, Hackett Shop UK of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <hackettshop.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 30, 2017. On October 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was November 26, 2017. The Center received only informal communications from the Respondent regarding possible settlement between November 14, 2017 and November 29, 2017. The Center informed the Parties of the commencement of Panel appointment process on November 27, 2017 and November 29, 2017.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 14, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant was founded in London in 1983 and has its registered seat in Luxembourg, selling traditional British clothing and accessories as well as sportswear. It has a presence through 29 stores in various countries worldwide and belongs to the Pepe Jeans Group.
The Complainant owns various trademarks for HACKETT and HACKETT LONDON, including two European Union wordmarks for HACKETT: Registration Number 003106151 in international classes 6, 9, 24, 25, and 28 with a priority of October 4, 2005, and Registration Number 003673118 in international classes 3, 14, and 18 with a priority of July 4, 2005 (the "HACKETT Marks").
The disputed domain name <hackettshop.com> was created on May 18, 2011 and is used for a website offering HACKETT branded clothing.
5. Parties' Contentions
With regard to the three elements specified in paragraph 4(a) of the Policy, the Complainant contends that each of the three conditions is given in the present case.
(i) HACKETT is supposed to be a well-known worldwide brand, and the disputed domain name to be confusingly similar to the HACKETT Marks. The generic term "shop" does not avoid confusing similarly between the trademark and the disputed domain name as it appears to describe an official shop of the Complainant, thereby increasing the finding of confusing similarity.
(ii) The Respondent allegedly has no rights or legitimate interests in respect of the disputed domain name as it is neither a licensee nor an authorized agent of the Complainant, and as it is not known by the disputed domain name. There is no legitimate or fair use of the disputed domain name as the Respondent is supposed to have created a false HACKETT online shop, selling counterfeit goods and trading upon the name, goodwill and reputation of the Complainant.
(iii) The Complainant alleges that the disputed domain name was registered and is being used in bad faith as the Respondent intentionally registered it for the purpose of making illegitimate use of the Complainant's marks, created a website very similar to the official website of the Complainant (impersonating the Complainant), and has been offering counterfeit goods at such website, misleading customers as to the source of the products.
The Respondent did not reply in substance to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the HACKETT Marks as it contains their distinctive element, the name "Hackett", and the generic addition "shop", which merely indicates the selling of goods.
The Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, once a prima facie case is made, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the burden of production has been shifted to the Respondent.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either.
The Respondent is using the disputed domain name for a website offering products similar to the Complainant's products and using the Complainant's branding. There is no persuasive evidence on the record supporting that the goods offered at the disputed domain name are counterfeit as repeatedly stated by the Complainant. But even if such goods were genuine, the use of the disputed domain name would not be bona fide under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if the use fits certain requirements, with regard to the actual offering of goods, the use of the site to sell only the trademarked goods, and the site is accurately and prominently disclosing the registrant's relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). According to the evidence on the record, however, the website at the disputed domain name does not visibly disclose the registrant's relationship with the trademark holder, therefore does not meet the Oki Data criteria, and cannot convey any rights or legitimate interests on the Respondent's use of the disputed domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the HACKETT Marks as the Respondent has used the disputed domain name in connection with a website featuring the Complainant's brands.
As to bad faith use, by fully incorporating the HACKETT Marks into the disputed domain name and by using such domain name for a website advertising the Complainant's brand, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) 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, <hackettshop.com> be transferred to the Complainant.
Date: December 20, 2017