WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hermes International v. Liu Gang

Case No. D2010-2291

1. The Parties

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

The Respondent is Liu Gang of Sunnyvale, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hermesbirkinbags.net> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2010. On January 4, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On January 5, 2011, Melbourne IT Ltd. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2011.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on February 9, 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.

4. Factual Background

The following summary sets out the uncontested factual submissions made by the Complainant:

4.1 The Complainant is a French high fashion house established in 1837, specializing in leather, ready to-wear, lifestyle accessories, perfumery and luxury goods.

4.2 As of 2008, the Complainant has 14 product divisions encompassing leather, scarves, ties, menswear, women’s fashion, perfume, watches, stationery, footwear, gloves, enamel, decorative arts, tableware and jewellery. Sales are made up of about 30% leather goods, 15% clothes and 12% scarves. High quality is a hallmark of the products produced under the HERMES trademark.

4.3 The Complainant’s revenue is approximately 1.914 billion euros (2009) and it employs more than 8,000 employees.

4.4 In 2009, the Americas generated 15% of the Complainant’s sales. It delivered revenues of 294 million euros, rising by 7% at constant exchange rates and by 11% for its network of branches.

4.5 The Complainant also offers for sale its luxurious goods online, through its official website located at “www.hermes.com”.

4.6 The Complainant is the registered owner of a substantial number of trademarks consisting or including the word “Hermes” in France and abroad. Amongst other jurisdictions, the Complainant is the registered owner of the following trademarks, in France, the European Union, the United States of America and the People’s Republic of China:

- HERMES, French nominative trademark No. 1 558 350 of October 16, 1979

- HERMES, Community nominative trademark No. 008772428 of December 1,2009

- HERMES, American nominative trademark No. 2213940 of May 15, 1997

- HERMES American nominative trademark No. 368785 of March 1, 1939

- HERMES Chinese nominative trademark No. 4932845 of October 8, 2005

- HERMES Chinese nominative trademark No. 4933050 of October 8, 2005

- HERMES & carriage device trademark No. 1 377 454 of November 30, 1976

- HERMES & carriage device Community trademark No. 008772436 of December 1, 2009

- HERMES & carriage device trademark No. 883588 of December 20, 1967

- HERMES & carriage device Chinese trademark No. 4933036 of October 8, 2005

- HERMES International nominative trademark No. 196756 of November 21, 1956

- BIRKIN International nominative trademark No. 686529 of January 21, 1998

- BIRKIN French nominative trademark No. 97691016 of August 8, 1997

These trademarks have been continuously used in commerce since their registration.

4.7 The Complainant also uses its HERMES trademark as a domain name to promote its activities. These domain names include:

<hermes.com> registered on November 24, 1997

<hermes.pro> registered on September 8, 2008

<hermes.asia> registered on February 14, 2008

<hermes.fr> registered on March 18, 1996

<hermes.eu> registered on March 9, 2006

All of these domain names are redirected to the official website of the Complainant at “www.hermes.com”.

4.8 The Complainant states the HERMES trademark, falls into the category of a “famous mark” as it is well -known throughout the world (including in the United States, where the Respondent is apparently located) for leather goods, ready to-wear, lifestyle accessories, perfumery, and luxury goods.

4.9 The Complainant further states that the Birkin bag (for which the BIRKIN trademark is registered) is one of the most recognized bags in the fashion industry and by the public and is reputed with a long waiting list. It is one of the Complainant’s best selling products.

4.10 The Respondent offers for sale on the website comprising the disputed domain name, counterfeit or unauthorized imitations of goods that bear the Complainant’s HERMES trademark.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has rights to the HERMES and the BIRKIN trademarks and that the disputed domain name <hermesbirkinbags.net> is identical or confusingly similar to the Complainant’s HERMES and BIRKIN trademarks. The disputed domain name comprises of the Complainant’s HERMES and BIRKIN trademarks in their entirety and the additional word “bags” which is generic and non-distinctive. The association of the trademarks BIRKIN and HERMES and the generic word “bags” in the disputed domain name only seeks to confuse Internet users into believing that the website associated with the disputed domain name is offering for sale Birkin bags manufactured by the Complainant.

5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name because:

(a) the Respondent is not currently and has never been known as “hermes”, “birkin” or “hermesbirkinbags”.

(b) the Respondent is not, in anyway, related to the Complainant’s business, is not one of its agents and does not carry out any activity for or has any business with the Complainant. The Complainant has not licensed or authorized the Respondent in any way to use the Complainant’s trademarks.

(c) the Complainant’s goods are sold throughout the world, including the United States, through self-owned stores whereas the Respondent is using the disputed domain name to sell counterfeit or unauthorised imitations of Hermes products in the absence of any rights or legitimate interest.

(d) the Complainant has never given any authorization or permission to the Respondent to register a domain name using the Complainant’s trademarks.

5.3 In relation to the requirement of bad faith registration and use of the disputed domain name, the Complainant contends as follows:

(a) the Respondent was aware of the existence of the Complainant’s trademark as HERMES and BIRKIN are well-known trademarks worldwide including in the United States.

(b) the Respondent registered the dispute domain name for the sole purpose of commercially benefitting from Internet traffic arriving at its websites, which enable the Internet users to purchase counterfeit or unauthorized imitations of Hermes products.

(c) through the website at the disputed domain name, the Respondent is offering for sale counterfeit or unauthorized imitations of products that bear the Complainant’s HERMES trademark at prices which are lower than the original Hermes products. This could cause considerable damage to the Complainant’s rights and its legitimate business interests.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) that the disputed domain name has been registered and is being used in bad faith.

6.1 Identical or Confusingly Similar to the Trademark

The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademarks HERMES and BIRKIN. The trademarks are not only registered by the Complainant in numerous jurisdictions but they have also been used extensively by the Complainant and its group of companies on a worldwide basis.

The disputed domain name comprises the Complainant’s HERMES and BIRKIN trademarks in its entirety with the additional word “bags”. This additional word refers to the well-reputed BIRKIN handbags produced and sold under the HERMES trademark.

The distinctive feature of the disputed domain name remains the HERMES and BIRKIN trademarks (see Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743).

As such the Panel finds that the disputed domain name is confusingly similar to the Complainant's HERMES and BIRKIN trademarks for the purpose of the Policy.

6.2 Rights or Legitimate Interests in the Disputed Domain Name

The Complainant’s assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the disputed domain name. There was also no evidence to indicate that the Respondent was known by any of the names “hermes”, “birkin” or “hermesbirkinbags”.

The Complainant has adduced sufficient evidence that the disputed domain name is being used solely for commercial gain. The website located at “www.hermesbirkinbags.net” indicates that the Respondent is using the website to promote the sale of counterfeit or unauthorized imitations of the Complainant’s products at a discount to the Complainant’s Hermes genuine products.

The Complainant further confirms that the Respondent has not been authorised to sell the Complainant’s products or to use the HERMES or BIRKIN trademarks. In Hermes International, SCA v. cui zhenhua, supra, it was held that “[t]he Complainant has not authorized, licensed or permitted the Respondent to use the trademark HERMES. The Complainant asserts that the Respondent is not commonly known by the disputed domain name . . . The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name” (see also Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038).

The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could find not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name.

Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

6.3 Registration and Use in Bad Faith

The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s HERMES and BIRKIN trademarks when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was only as recent as 2010 when compared to the date when the Complainant started using the HERMES and BIRKIN trademarks and the “www.hermes.com” website, the widespread use of the HERMES and BIRKIN trademarks by the Complainant at a global level and the fact that the Respondent was openly selling counterfeit or unauthorized imitations of the Complainant’s products through its website.

In Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831, the panel took into account the fact that the respondent was selling counterfeit bags in determining bad faith. The panel held that “the Respondent must have had the Complainant’s notorious trademark in mind when he registered the Domain Name, as evidenced in particular by the use to which the Domain Name has been put [(sale of counterfeit bags)]. In view of the Panel’s finding that the Respondent has no rights or legitimate interests in the domain name, it follows that the domain name was registered in bad faith”.

Similarly, in Hermes International, SCA v. cui zhenhua, supra, the panel found that the respondent was offering for sale counterfeit goods through the website under the domain name in dispute. In this regard the panel held that “[t]he Complainant has asserted that the website which was operated at the disputed domain name was used by the Respondent to offer for [sic] sale counterfeit HERMES branded products and this assertion has not been rebutted by the Respondent. Moreover, the Respondent claims its products as replica trademarked products on the website under the disputed domain name. The sale of counterfeited goods under the Complainant’s trademark amounts to bad faith . . . The Panel finds that by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website . . . The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith”.

The Panel is satisfied that the Respondent had knowledge of the reputation and goodwill of the HERMES and BIRKIN trademarks when he sought to register the disputed domain name and he intended to use and indeed used the disputed domain name to sell counterfeit or unauthorised imitations of the Complainant’s Hermes products. As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.

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 domain name <hermesbirkinbags.net> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist
Dated: February 23, 2011