WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International v. Yue Wang
Case No. D2020-1163
1. The Parties
The Complainant is Hermes International, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Yue Wang, China.
2. The Domain Name and Registrar
The disputed domain name <hermesreplicas.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 May 11, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 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 May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on June 19, 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 luxury goods manufacturer with its headquarters in Paris, France. It was established in 1837 and, as at December 2018, it employed over 15,000 people worldwide and traded in 311 stores, of which 223 were directly owned by it.
The Complainant’s primary brand is HERMES and it has registered many trade marks in multiple jurisdictions to protect its mark, including, by way of example only, French trade mark, registration number 229193A, registered on March 3, 1960 for HERMES (word only) in classes 9 and 16, and Chinese trade mark, registration number 1576751, registered on May 28, 2001. The Complainant operates a customer-facing website at “www.hermes.com” which receives an average of more than 2.6 million visits per month and it owns many other domain names which incorporate its HERMES mark, including <hermes.fr> and <hermes.cn>.
The disputed domain name was registered on November 20, 2017. For a period following registration, the disputed domain name resolved to a website, the home page of which was headed “ReplicaHermesShop”, underneath which appeared the words “Designer Replica Hermes Online Sale”. The website offered for sale bags which were purportedly replicas of the Complainant’s products. The Respondent’s website also appears to have offered for sale fashion jewelry which was not specifically branded as that of the Complainant.
In April 2018, the Complainant’s advisors wrote to the company hosting the Respondent’s website requesting that it remove from the website all content which infringed the Complainant’s trade marks. In or around March 2020, the Complainant’s advisors notified the Registrar that it believed the Respondent had submitted incorrect address details for the WhoIs record. The Respondent’s website is no longer active and the disputed domain name now resolves to a single webpage which states: “Notice: This domain has been redirected. If you are the registrant of this domain please contact email@example.com”.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its registered trade marks for HERMES, full details of one of these marks being set out above, and says that these establish its rights in HERMES. In creating the disputed domain name, the Respondent has added the descriptive term “replicas” to the Complainant’s mark, thereby making the disputed domain name confusingly similar to it. The fact that “replicas” is a word closely linked and associated with the Complainant’s brand (in that the Complainant’s products are frequently imitated) serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trade mark; see, for example, Inter IKEA Systems B.V. v. Franklin Lavall?e / IkeaCuisine.net, WIPO Case No. D2015-2042.
The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and it is neither sponsored by, nor affiliated with, the Complainant in any way. The Complainant has not given the Respondent permission to use its trade marks in any manner, including in domain names.
Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trade mark. As the panel found in Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed”.
The Respondent has been using the disputed domain name in connection with a commercial website offering counterfeit versions of the Complainant’s products. This amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
As a result of the Complainant’s advisors having contacted the Registrar in relation to the provision by the Respondent of inaccurate contact details, the disputed domain name currently redirects Internet users to a blank page that reads, “Notice, this domain has been redirected” and requests that the registrant (that is, the Respondent) contact the Registrar. However, the Respondent has not attempted to find a legitimate use for the disputed domain name, which further evidences a lack of rights or legitimate interests in it; see, for example, Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. By registering a domain name which incorporates the Complainant’s HERMES mark and merely adding the term “replicas”, the Respondent has demonstrated a knowledge of, and familiarity with, the Complainant’s brand and business as at the date of registration. Furthermore, where a domain name is very obviously connected with a well-known name and products, its use by someone with no connection with those products suggests opportunistic bad faith; see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226
Pursuant to paragraph 4(b)(iv) of the Policy, bad faith can be established by evidence that demonstrates that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on it. Prior to the takedown of the Respondent’s website by the Registrar, the Respondent sought to create a likelihood of confusion with the Complainant and its trade marks by using the disputed domain name to resolve to a website which sold counterfeit versions of the Complainant’s products. The Respondent’s actions created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and an intention to profit unlawfully from such confusion. Such conduct constitutes bad faith; see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
The disputed domain name currently resolves to a blank registrar page and is not being used. However, passively holding a domain name can also amount to bad faith registration and use and does so in the circumstances of this case; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; 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 Complainant has provided details of the many registered trade marks it owns for HERMES; these establish the Complainant’s rights in its marks.
As a technical requirement of registration, the generic Top Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s HERMES mark and the disputed domain name is the addition of the word “replicas” after the mark. This does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Complainant’s HERMES trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
So far as the first circumstance is concerned, the fact that the Respondent was marketing at least some of its products as replicas of the Complainant’s products rather selling counterfeits (that is, products which purport to be those of the Complainant) is not a material distinction. Replica products are likely to infringe the Complainant’s intellectual property, damage its brand and cannibalize its sales and a website devoted to selling such products does not comprise a bona fide offering of goods or services. As explained at section 2.13.1 of the WIPO Overview 3.0 which explains (in the specific context of fair use, but of wider application) that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” Nor does the currently inactive status of the disputed domain name comprise a bona fide offering of goods and services.
The second and third circumstances under paragraph 4(c) of the Policy are inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name was put, whilst it was active, was commercial in character and did not constitute fair use. As explained at section 2.5.1 of the WIPO Overview 3.0; “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”
The Complainant has made a strong prima facie case under the second element and, in the absence of any reply by the Respondent, the Panel finds that it has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent was evidently aware of the Complainant and its HERMES mark as at the date of registration of the disputed domain name. Not only is the Complainant’s mark inherently distinctive and unlikely to have formed a component of the disputed domain name by chance, but the inclusion of the word “replicas” within it associates it still more closely with the Complainant. In addition, the only known use of the disputed domain name following registration has been to resolve to a website offering for sale replicas of the Complainant’s products to Internet users. Accordingly, as at the date of registration of the disputed domain name, the Respondent both knew of the Complainant and intended to profit unfairly from the connection which Internet users would make between it and the Complainant.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Whilst a seller of replica products does not claim that its products are authentic, the impact of such sales, from the perspective of the brand owner whose products are being imitated, is (as explained earlier) essentially the same as with counterfeits. Moreover, whilst the Respondent’s website was active, it did not make it clear that the Respondent had no authority to sell such products or that the Complainant would object to their sale. Accordingly, Internet users will have been confused or misled by the Respondent’s use of the Complainant’s mark and this will have been the Respondent’s intention. The registration and use of the disputed domain name by the Respondent therefore falls within the circumstance of bad faith outlined at paragraph 4(b)(iv) of the Policy. See also section 3.1.4 of the WIPO Overview 3.0 “Given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.”
The current inactive status of the disputed domain name comprises passive holding of it by the Respondent. Section 3.3 of the WIPO Overview 3.0, explains that; “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Applying these factors, briefly, to the current circumstances; (i) the Complainant’s mark is very well known and the Respondent will have been aware of it as at the time of its registration of the disputed domain names; (ii) the Respondent has not replied to the Complaint; (iii) the Respondent has sought to conceal its identity through the use of inaccurate address details; and (iv) it is impossible to think of any good faith use to which the disputed domain name could be put.
For the above reasons, the Panel finds that the disputed domain name was both registered and is being used 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 <hermesreplicas.com> be transferred to the Complainant.
Date: July 3, 2020