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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Herno S.p.A. v. Melissa Birkholz

Case No. D2020-0162

1. The Parties

The Complainant is Herno S.p.A., Italy, represented by Caramelli Lazzarotto Associati S.r.l., Italy.

The Respondent is Melissa Birkholz, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <hernoclothing.com> (“Disputed Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 23, 2020, 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 January 30, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was February 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on February 21, 2020.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 26, 2020. 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 apparel company based in Italy and specializes in manufacturing outerwear garments such as coats and jackets.

The Complainant is the owner of numerous trade mark registrations for the HERNO mark in various jurisdictions, including, inter alia, the HERNO trade mark, International registration No. 1287361, registered on July 10, 2015, covering goods and services in several classes and protected in various countries, including classes 3, 9, 14, 18, 25 and 35.

The Complainant also owns and operates various domain names corresponding to and/or containing the word HERNO. These domain names include but are not limited to <herno.com>, <herno.clothing>, <herno.company>, <herno.us>, <herno.uk>, <herno.fr>, and <herno.it>.

The Respondent registered the Disputed Domain Name on February 18, 2017. The Disputed Domain Name is used in connection with a website reproducing the look and feel of the Complainant’s corporate website, featuring the Complainant’s trade marks in the homepage and throughout the website.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark HERNO, which has been wholly incorporated into the Disputed Domain Name;

(b) the Respondent was not commonly known by the Disputed Domain Name and the Complainant has never authorised or given permission to the Respondent, who is not connected or affiliated with the Complainant in any way, to use its HERNO trade mark, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Name; and

(c) the reputation and uniqueness of the Complainant’s HERNO trade mark, combined with the fact that the Disputed Domain Name resolves to a website which has a highly similar design to the Complainant’s corporate website and offers for sale goods bearing the HERNO trade mark without authorization by the Complainant, support the fact that the Respondent is registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the HERNO trade mark, based on its various trade mark registrations.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s HERNO mark in its entirety with the addition of the word “clothing”. UDRP panels have consistently found that the addition of a descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

The Panel therefore agrees with the Complainant that the mere addition of the word “clothing” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark.

Accordingly, the Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s HERNO trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainant has not authorised the Respondent to use the HERNO mark, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the HERNO mark. Accordingly, the Panel is of the view that a prima facie case has been made and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. UDRP Panels have held that where the content of the respondent’s website appears to be designed to reinforce the Internet user’s impression that the domain name belongs to the complainant, or the website is presented as if it was an official website of the complainant, such use cannot constitute a bona fide offering of goods or services (see Swarovski Aktiengesellschaft v. Luc Sun, WIPO Case No. D2012-0071 and FC Bayern Muenchen AG v. Whoisguard Protected, Whoisguard, Inc. / Name Redacted, WIPO Case No. D2016-2282). In this case, the Disputed Domain Name resolves to a website which has a highly similar design to the Complainant’s corporate website and features the HERNO trade mark on the top of each page prominently. Therefore, it cannot be said that such use by the Respondent constitutes a bona fide offering of goods or services.

There is also no evidence to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that it has become known by the Disputed Domain Name.

Further, no evidence has been provided to suggest that the Disputed Domain Name have been used in connection with any legitimate non-commercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0. As such, the fact that the Disputed Domain Name incorporates the Complainant’s HERNO mark in its entirety with the addition of a descriptive term already creates a presumption of bad faith.

The Complainant’s HERNO trade mark is also fairly well-known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “herno” are the Complainant’s websites and websites of various retailers promoting the Complainant’s goods. The website to which the Disputed Domain Name resolves also has a highly similar design to the Complainant’s corporate website, features the HERNO trade mark on the top of each page prominently, and makes available for sale goods bearing the HERNO trade mark without authorization by the Complainant. Furthermore, the assertions and evidence submitted by the Respondent suggest that it was fully aware of the Complainant at the time of registering the Disputed Domain Name.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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 <hernoclothing.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: March 11, 2020

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