WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H & M Hennes & Mauritz AB v. Chen Jia Jin and Elizaveta Kolesnikova
Case No. D2020-0999
1. The Parties
The Complainant is H & M Hennes & Mauritz AB, Sweden, represented by Stobbs IP Limited, United Kingdom.
The Respondents are Chen Jia Jin, China and Elizaveta Kolesnikova, China.
2. The Domain Names and Registrar
The disputed domain names <hmsale.site> and <hmusae.site> (“Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2020. On April 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 24, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on April 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 19, 2020.
The Center appointed Ellen B Shankman as the sole panelist in this matter on May 20, 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.
The Panel notes that contact details (including postal address, phone number and email address) of the Respondents are the same. Therefore, the Panel finds that the consolidation into one proceeding in the circumstances of all of the Domain Names showing evidence of common control is justified, and to be determined by a single decision under the facts of this case to be fair and reasonable.
4. Factual Background
The date of the first Domain Name for <hmsale.site> registration was confirmed by the Registrar to be February 10, 2020.
The date of the second Domain Name for <hmusae.site> registration was confirmed by the Registrar to be October 22, 2019.
The trademark H&M serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide.
The Complainant provided evidence of multiple trademark registrations for the mark H&M including, inter alia, United States of America Registrations No. 2397326 (registered on October 24, 2000) and International Registration No. 785451 (registered on August 2, 2002) both for word marks and logos, that predate the date of the Domain Names registrations for retail services.
The Complainant further provided evidence of earlier screenshots of the Domain Names directing to identical websites that showed use of the Complainant’s registered H&M logo and purportedly offered the Complainant’s products for sale. The Complainant also supplied evidence of a “cease and desist” demand letter to the Respondents that the Complainant contends did not receive any response.
The Panel also conducted an independent search to determine that the Domain Names direct to websites that currently appear to be inactive. The second Domain Name <hmusae.site> directs to a strong security message.
5. Parties’ Contentions
The Complainant is a multinational clothing-retail group, publically traded on NASDQ as HM-B. Across its eight core brands, the Complainant offers customers a wealth of styles and trends across fashion, beauty, accessories homeware and food. The Complainant operates in more than 4,900 stores across 72 markets and as of 2018, employs around 177,000 people. The Complaint asserts that as of 2018, the Complainant brought in a total of KR (Swedish krona) 210 billion (approx. USD 22 billion dollars) in net sales and KR 12.6 billion (approx. USD 1.2 billion dollars) in profit after tax.
The Complaint contends that the Complainant’s brands are known worldwide, both in physical stores and online through websites such as “www.hm.com”. The Complainant is also active on social media and has generated a significant level of endorsement. In addition to websites and social media, the Complainant’s brands have been promoted extensively in marketing and advertising materials, such as billboards. The Complainant has developed a large portfolio of domain names, which incorporate the H&M brand. The Complainant currently has over 500 registered domain names relating to this brand. Through the Complainant’s on-going and extensive use of the H&M brand throughout the world, the Complainant has developed a substantial reputation and goodwill across a broad range of products and services.
The Complainant submits that the Domain Names are confusingly similar to that of the H&M trademark. It is widely recognised, that the use of the ampersand “&” cannot be reflected in domain names. Therefore, the relevant element of the trademark is “HM”. The Domain Names both wholly incorporate the “hm” word, along with the words, “usae” (for <hmusae.site>) and “sale” (for <hmsale.site>), which do nothing to materially alter the overall impression of the Domain Names, and if anything the addition of these words merely reinforce an association between the Complainant’s H&M brand and the Domain Names. For example, an “H&M Sale” is often posted on the Complainant’s website, which enable customers to purchase stock at discount prices, for a limited period of time. The Top-Level Domain (“TLD”) suffix should be disregarded for purposes of this test, and thus the Domain Names are confusingly similar to the Complainant’s established trademark rights.
The Complainant submits that the Respondents do not have any rights or legitimate interests in the Domain Names. The Respondents are not making any legitimate noncommercial or fair use of the Domain Names, and are doing so with the intent of commercial gain and to misleadingly divert consumers. Bearing in mind the considerable reputation of the H&M brand and the current use made, there is no believable or realistic reason for registration or subsequent use of the Domain Names other than to take advantage of the Complainant’s rights.
In addition to circumstantial evidence, the Complainant submits that the Respondents had actual knowledge of the Complainant’s brand, which is evident from the content on the Respondents’ websites, which prominently showed the Complainant’s H&M logo and product images. Therefore, the Complainant submits that the Domain Names were registered with prior knowledge of the Complainant and the H&M brand and were registered with the sole purpose of creating an association with the Complainant. Consequently, the Respondents are intending to draw unsuspecting users to the Domain Names, for their own commercial gain and, which in turn, is likely to cause detriment to the Complainant.
The Complainant alleges that prior to filing a UDRP complaint against the Respondents, the Complainant attempted to contact the Respondents regarding <hmusae.site>, with a view to amicably resolving that matter, using the email address on the Respondents’ website “orders@[...]”. The Complainant (through its legal representative), first attempted to contact the Respondents on January 21, 2020. The Complainant then sent a further letter dated February 17, 2020. The Respondents did not respond to either letter, which the Complainant argues further supports a finding of bad faith.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark H&M house word mark and logo, in respect of a wide range of retail goods and services. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the terms “usae” and the descriptive word “sale”, as well as the generic TLD (“gTLD”) “.site” does not prevent a finding of confusing similarity. Therefore, the Domain Names <hmsale.site> and <hmusae.site> could be considered virtually identical or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondents have no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondents by the Complainant, especially for competing goods and services. Thus, the Respondents’ registrations and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for H&M, and that the relevant element of the trademark for purposes of this UDRP is “HM”. This is consistent with the panel’s decision in H & M Hennes & Mauritz AB v. Domain Admin, PrivacyProtect.org / Horario Mendoza, WIPO Case No. DCO2014-0008: “The ampersand (present in the Complainant’s trademark but absent from the disputed domain name) is not a valid character for the registration of a domain name […]”. Therefore, the relevant element of the trademark is “HM”.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the terms “usae” and the descriptive word “sale”, as well as the gTLD “.site” to the Domain Names do not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the Domain Names and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondents to use its trademarks. Further, the Respondents are not commonly known by the Domain Names.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondents lack rights or legitimate interests in the Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondents have no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is persuaded that the Respondents were well aware of the Complainant by the use of the Complainant’s H&M logo on their websites, and attempted to profit from that association. The Panel is further persuaded that the Respondents deliberately registered the Domain Names and used the Complainant’s H&M logo to create a misleading and fraudulent impression of association and confusion with the Complainant. The content of the website clearly shows that the Respondents were well aware of the Complainant’s activities and trademarks and intended opportunistically to benefit on the goodwill of the Complainant’s trademarks and to profit from consumer confusion.
Given the extent of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondents have registered the Domain Names with full knowledge of the Complainant’s trademark H&M and uses them for the purpose of misleading and diverting Internet traffic for commercial gain and for opportunistic fraudulent behaviour and the sale of goods. Moreover, the websites at the Domain Names claimed to be H&M official websites.
In addition, consistent with prior UDRP decisions, a respondent’s failure to comply, or even respond to a cease and desist letter, supports a finding of bad faith. See, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 and Deckers Outdoor Corporation v. Registration Private, Domains By Proxy, LLC / Eric Mafolo, WIPO Case No. D2019-2042.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant and the fraudulent imitative website utilizing the Complainant’s H&M logo, the Panel finds that the Complainant has satisfied the third requirement that the Respondents have registered and are using the Domain Names in bad faith, under 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 Domain Names <hmsale.site> and <hmusae.site> be transferred to the Complainant.
Ellen B. Shankman
Date: May 24, 2020