WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hermès International v. heigens benjmin/Domains By Proxy, Inc., and Lina Bloom/PRIVATE WHOIS SERVICE

Case No. D2011-0363

1. The Parties

The Complainant is Hermès International of Paris, France, represented by MEYER & Partenaires, France.

As appears below, the Panel finds that both disputed domain names are controlled by the same person, herein referred to as the Respondent. The Respondent is known as heigens benjmin of Indianapolis, Indiana, United States of America/ Domains By Proxy, Inc. of Scottsdale, Arizona, United States of America; and as Lina Bloom of Guangzhou, the Peoples Republic of China/PRIVATE WHOIS SERVICE of Nassau, Bahamas.

2. The Domain Names and Registrars

The disputed domain name <greathermes.com> is registered with GoDaddy.com, Inc. The disputed domain name <designerbirkin.co> is registered with My.CO Gateway.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2011, concerning the disputed domain name <greathermes.com> and naming Domains By Proxy, Inc. as sole Respondent. On February 24, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with that domain name. On February 26, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <greathermes.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 28, 2011 providing the registrant and contact information disclosed by GoDaddy.com, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint regarding the disputed domain name <greathermes.com> on March 2, 2011, naming heigens benjmin/ Domains By Proxy, Inc. as the Respondent.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2011.

On March 24, 2011, the Complainant submitted a Supplemental Filing to the Center requesting the inclusion in this administrative proceeding of the disputed domain name <designerbirkin.co>, upon the ground that, although registered in different names, both disputed domain names are controlled by the same entity. The Complainant submitted that the dispute domain name <designerbirkin.co> had been registered on March 10, 2011. However, My.CO Gateway has indicated that the disputed domain name <designerbirkin.co> was registered on March 3, 2011, apparently in the name PRIVATE WHOIS SERVICE.

The Center appointed Alan L. Limbury as the sole panelist in this matter on March 31, 2011. 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.

On April 5, 2011, at the request of the Panel, the Center transmitted by email to My.CO Gateway a request for registrar verification in connection with the disputed domain name <designerbirkin.co>. On April 6, 2011, My.CO Gateway transmitted by email to the Center its verification response identifying the underlying registrant as Lina Bloom and providing the contact information.

On April 8, 2011, the Panel issued Procedural Order No.1, indicating that the Panel was minded to accept the Complainant’s Supplemental Filing and to consider the additional domain name <designerbirkin.co> in these proceedings; setting out the relevant registration information obtained from the concerned Registrar regarding that domain name; noting that the Rules, paragraph 3(c) provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”; reserving the right of the Panel to make any procedural or substantive findings to this effect; instructing the Center to forward a copy of the “Notification of Complaint” email and the Complainant’s Supplemental Filing to the contact information of all identified registrants in these proceedings; directing that the identified registrants may file their submissions in reply to the Complaint and the Complainant’s Supplemental Filing by no later than April 28, 2010; and extending the decision due date to 10 days after receipt of the last of the submissions or expiry of the time for filing the last of such documents.

No submissions were received by the Center in response to Procedural Order No.1.

On May 4, 2011, the Panel issued Procedural Order No.2, stating that, further to Procedural Order No.1 and in accordance with paragraphs 10 and 12 of the Rules, the Panel had decided to include the disputed domain name <designerbirkin.co> in these proceedings and to add Lina Bloom/PRIVATE WHOIS SERVICE as the Respondent; requesting the Complainant to provide, by no later than May 9, 2011, evidence of its rights in the BIRKIN trademark and any further submissions it wished to make on the second and third elements regarding the disputed domain name <designerbirkin.co>; permitting Lina Bloom/PRIVATE WHOIS SERVICE to file any comments strictly on the points arising from any such further submissions within 3 days from receipt thereof; directing that no other information or materials should be filed or supplied by the parties; and extending the decision due date to 7 days after receipt of the last of the submissions or expiry of the time for filing the last of such documents.

On May 9, 2011, the Complainant complied with Procedural Order No.2.

No submissions were received by the Center in response to the material provided by the Complainant in its response to Procedural Order No.2.

The decision due date was accordingly extended to May 19, 2011.

4. Factual Background (undisputed facts)

The Complainant is a French high fashion house established in 1837, which sells luxury goods such as handbags, throughout the world. It is the registered proprietor of numerous trademarks, including French registration for HERMÈS, No. 1558350 dated October 16, 1979; French registration for HERMÈS with carriage logo, No. 1377454 dated October 30, 1986; and European Community registration for the stylized capital letter H, No. 8811267, dated July 8, 2010.

The Complainant is also the proprietor of International registered trademark BIRKIN, No. 686529, dated January 21, 1998 and French registered trademark BIRKIN, No. 97691016, dated August 8, 1997.

The disputed domain name <greathermes.com> was registered on March 30, 2010. As at the date of the filing of the Complaint, February 24, 2011 the disputed domain name resolved to a website at “www.greathermes.com”, displaying the Complainant’s HERMÈS, HERMÈS with carriage logo and stylized H marks and offering for sale counterfeit replicas of the Complainant’s Hermès and Hermès Birkin goods.

As mentioned, the disputed domain name <designerbirkin.co> was registered on March 3, 2011 (after the commencement of these proceedings). As at the date of the Complainant’s Supplemental Filing, March 24, 2011, both disputed domain names <greathermes.com> and <designerbirkin.co> resolved to a website at “www.mypurseworld.us”, headed “Popular Hermes Birkin hot sale! DESIGNER BIRKIN”, and offering for sale counterfeit replicas of the Complainant’s Hermès and Hermès Birkin goods.

5. Parties’ Contentions

A. Complainant

The Complainant says the registrants of the two disputed domain names are the same person since, inter alia, both domain names resolve to the same website, use the same servers, have the same IP address and are on the same network in the same location.

The Complainant says the disputed domain name <greathermes.com> is confusingly similar to its famous HERMÈS mark; that the disputed domain name <designerbirkin.co> is confusingly similar to its famous BIRKIN mark; and that the Respondent has no rights or legitimate interests in either of those disputed domain names, which were registered and are being used in bad faith.

The Complainant says, inter alia, that the Respondent is not known by either of the disputed domain names, is not authorized by the Complainant to use its trademarks in domain names or at all, and is using the disputed domain names to sell counterfeit replicas of the Complainant’s goods. The Respondent must have known of the Complainant and of its trademarks when registering the disputed domain names.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements with respect to each of the disputed domain names:

(i) The disputed domain names are identical or confusingly similar to a trademark 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 names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080 and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848.

A. Procedure: inclusion of additional domain name

The Panel accepts the Complainant’s assertion that although registered with different registrars, using different privacy services and under different registrant names, the disputed domain names <greathermes.com> and <designerbirkin.co> resolve to the same website and are under the control of the same person. Accordingly the Panel decided to include the disputed domain name <designerbirkin.co> in these proceedings.

B. Identical or Confusingly Similar

The Complainant has rights in the trademarks HERMÈS and BIRKIN. The Panel finds that the disputed domain name <greathermes.com> is confusingly similar to the Complainant’s HERMÈS mark and that the disputed domain name <designerbirkin.co> is confusingly similar to the Complainant’s BIRKIN mark.

The Complainant has established this element of its case.

C. Rights or Legitimate Interests

The Panel accepts the Complainant’s submission that its HERMÈS and BIRKIN marks are famous. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the disputed domain names <greathermes.com> and <designerbirkin.co> on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in those names: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names <greathermes.com> and <designerbirkin.co>.

The Complainant has established this element of its case.

D. Registered and Used in Bad Faith

The Panel accepts that the Respondent must have known of the Complainant’s famous HERMÈS mark when registering the disputed domain name <greathermes.com> and of the Complainant’s famous BIRKIN mark when registering the disputed domain name <designerbirkin.co>. The latter registration occurred after the commencement of these proceedings when the Respondent must have appreciated that its <greathermes.com> domain name registration was likely to be transferred to the Complainant. Both registrations were clearly made in bad faith.

The use of those domain names to sell counterfeits of the Complainant’s goods under the Complainant’s trademarks is clearly use in bad faith.

The Complainant has established this element of its case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <greathermes.com> and <designerbirkin.co>, be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Dated: May 14, 2011