WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H & M Hennes & Mauritz AB v. ChenJia Xing
Case No. D2019-1768
1. The Parties
The Complainant is H & M Hennes & Mauritz AB, Sweden, represented by Stobbs IP Limited, United Kingdom.
The Respondent is ChenJia Xing, China.
2. The Domain Name and Registrar
The disputed domain name <hmclothingoutlet.com> (the “Domain Name”) is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed in English an amended Complaint on July 26, 2019.
On July 25, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On July 26, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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, in English and Chinese, of the Complaint, and the proceedings commenced on August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on September 6, 2019. 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 multinational clothing-retail group. It operates in more than 4,900 stores across 72 markets and as of 2018 employs 177,000 people. It is a publicly traded company on NASDAQ with net sales in 2018 of USD 22 billion. The Complainant’s products are sold under the brand “H&M”. The Complainant is the registered proprietor of the H&M trade mark in jurisdictions worldwide (the “Trade Mark”). The earliest trade mark registration submitted in evidence dates back to March 24, 1995 (International Trademark No. 634641). The registrations includes the Trade Mark in the form of a stylized logo which is usually depicted in red (the “H&M Logo”).
The Complainant has a portfolio of domain names which incorporates the Trade Mark including <hm.com> which is connected to its official website, “www.hm.com”. The Complainant is active on social media and has over 30 million followers both on Facebook and Instagram. The Trade Mark is also promoted extensively on billboards and other marketing and advertising materials. The Complainant has also won many awards and accolades especially as a leader in sustainability within the fashion industry.
The Domain Name was registered October 7, 2018 by the Respondent who is based in China. The Domain Name is connected to an English language website (the “Website”) which bears the H&M Logo, the Complainant’s images (the “Copyright”) and resembles an official on-line store of the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- the Domain Name is in Latin characters and English words;
- the content of the Website is entirely in English and the products offered on sale on the Website are offered in USD (United States of America), AUD (Australia), CAD (Canada) and GBP (United Kingdom) which are all currencies relating to English speaking countries;
- the Respondent has been involved in another UDRP complaint where the panel found there to be persuasive evidence that the Respondent had sufficient knowledge of the English language for the language of the proceeding to be English;
- the Complainant may be put to undue delay and expense which goes against the spirit of the Policy if it has to translate the Complaint into Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
The dominant portion of the Domain Name contains the two-letter element of the Trade Mark but not the ampersand which separates the “H” and “M”. The Panel recognizes that the use of the ampersand “&” cannot be reflected in domain names. The Complainant’s official website is connected to a domain name without the “&” – hm.com. The dominant feature of the Trade Mark for these purposes is therefore “HM”. In this case the Domain Name contains the dominant feature of the Trade Mark together with the descriptive words “clothing” and “outlet”. The addition of these words does not prevent a finding of confusing similarity. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.shop”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Moreover, the Panel has taken note of the content of the Website to confirm the confusing similarity as the Respondent seems to target the Trade Mark through the Domain Name (section 1.15 of the WIPO Overview 3.0).
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element.
The Complainant submits that the Domain Name is not used in a connection with a bond fide offering of goods or services as the Website whilst not an exact replica of the Complainant’s official website, it was set up with the intention of creating a connection with the genuine website because the Website has the same overall impression to that of the Complainant’s due to the inclusion of the H&M Logo, the Copyright and purports to offer for sale the Complainant’s products.
The Complainant also submits that to the best of its knowledge the Respondent has not been commonly known by the Domain Name. Further nothing from the content of the Website suggests that the Respondent is making a legitimate noncommercial or fair use.
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In this case, there is nothing on the Website explaining the relationship between the Complainant and the Respondent. Indeed, there is minimal information on the Website about the Respondent. The fact that the Website is offering for sale what looks like the Complainant’s clothing and accessories and has images from the Complainant’s website does appear to the Panel that the content of the Website was intended to mislead Internet users into thinking that there is a connection between the Complainant and the Respondent. The Panel finds the requirements set out in the Oki Data test are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name given the fame of the Trade Mark and the fact that the Website bears the H&M Logo, the Copyright and purports to offer for sale the Complainant’s products.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Panel also concludes that the actual use of the Domain Name is also in bad faith. The use of the Trade Mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. The Domain Name and the content of the Website are calculated to confuse Internet users that the Respondent is somehow connected to the Complainant when this is not the case. There are no contact details on the Website which could suggest that personal data and credit card details entered by customers could potentially be collected and used for nefarious purposes. The lack of response by the Respondent is another indicator or typical cybersquatter behaviour. There is a clear intention on the part of the Respondent to attract Internet users for commercial gain by confusing and misleading Internet users into believing that the Website and the products sold on it were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(a)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are 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 Domain Name <hmclothingoutlet.com> be transferred to the Complainant.
Date: September 19, 2019