WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hermes International v. Yufang Zhong
Case No. D2010-2117
1. The Parties
The Complainant is Hermes International of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Yufang Zhong of Sichuan, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <hermestore.com> is registered with Todaynic.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 9, 2010, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 10, 2010, Todaynic.com, Inc. 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 December 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 13, 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 facts relevant to the findings and decision in this case are that:
1. The Complainant is part of a group of related companies (“the Hermes Group”) which have since 1837 sold leather goods, fashionware, perfume and other luxury goods under the trademark HERMES.
2. The Hermes Group is the owner of a great many registrations for the trademark.1
3. The disputed domain name was registered on August 3, 2010.
4. At the time the Complaint was filed, an active website corresponding with the disputed domain name replicated in part the Complainant’s websites and offered for sale goods bearing the Complainant’s trademark.
5. The Complainant has not authorised the Respondent to use the trademark or to register any domain name incorporating the trademark and alleges that the goods offered for sale by the Respondent which bear the Complainant’s trademark are counterfeit goods.
5. Parties’ Contentions
The Complainant asserts trademark rights and states that the disputed domain name is confusingly similar to its trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the lack of a Response, the Panel moves to paragraph 4(a) of the Policy which requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
That said, the Panel finds that this is a clear case of domain name abuse as shown herein.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the trade mark and domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. The Complainant has trademark rights in HERMES acquired through registration2. In addition, for the purposes of the Policy, the Panel finds that the Complainant has unregistered rights in the trademark acquired through use and reputation3.
The remaining question is whether the disputed domain name <hermestore.com> is confusingly similar to the Complainant’s trademark. For the purposes of testing confusing similarity, the generic top-level domain, “.com,” can be ignored4. The disputed domain name wholly incorporates the Complainant’s trademark, adding only the word “store” with elision of the additional “s” which would be present if the two words were separated out. Within the context of the Complainant’s business, the word “store” is utterly descriptive and non-distinctive.5 Countless UDRP decisions have held that a domain name comprising a complainant’s trademark combined only with terms such as “cheap”, “online”, “buy” and “store” is confusingly similar to the trademark itself for the purposes of paragraph 4(a)(i).
The Panel finds the disputed domain name confusingly similar to the Complainant’s trademark and so finds that the Complainant has satisfied the first limb of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests6.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trademark rights in the name, registered or not. The Complainant has stated there to be no relationship between it and the Respondent.
The Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Moreover, the Complainant alleges that the goods offered for sale by the Respondent are counterfeit copies of the Complainant’s goods and bear infringing trademarks.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant did not expressly rely on any one or more of those scenarios, choosing instead to argue both registration in bad faith and use in bad faith. The Panel finds it simpler to decide that the facts of the case bring the Respondent’s conduct squarely within paragraph 4(b)(iv).
The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy.
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, <hermestore.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: January 19, 2011
1 For example, International (Madrid) Registration. No. 196756 of November 21, 1956; Community (CTM) Registration No. 008772428 of December 1, 2009; Chinese Registration No. 4932845 of October 8, 2005; and Chinese Registration No. 4933050 of October 8, 2005.
2 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 The HERMES trademark has been used continuously for over 150 years. The Complainant’s goods are sold all over the world. In 2009 the group revenue was over EUR 1.9 billions. The HERMES Group employs over 8,000 people.
4 See Gardline Surveys Ltd v. Domain Finance. Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
5 See, by analogy, Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, finding that “CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, ‘perfumes’ is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.” See also Guccio Gucci S.p.A., v. Bravia Stoli, WIPO Case No. D2009-1170, concerning the domain name <guccifragrance.com>.
6 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.