The Complainant is Hermes International of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is yang shujin of Guizhou, the People’s Republic of China.
The disputed domain name <buyhermesbirkin.com> is registered with Bizcn.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2010. On December 29, 2010, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 30, 2010, Bizcn.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. On January 5, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 7, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2011.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 8, 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.
The Complainant, Hermes International, is a French company whose business consists of design and sale of luxury goods, namely, leather goods, luggage and handbags, clothing and perfumes, which are sold worldwide.
In 2009, the Complainant's products were sold at revenue of EUR 1.914 billion.
The Complainant markets its products worldwide through its boutiques and employs approximately 8,000 employees worldwide.
Since its establishment in 1837, the Complainant has been using the HERMES mark in connection with its goods.
The Complainant is the owner of multiple trademark registrations for the mark HERMES around the world. For example: Chinese trademark registration No. 4932845 – HERMES, with the filing date of October 8, 2005; Chinese trademark registration No. 4933050 – HERMES, with the filing date of October 8, 2005; French trademark registration No. 1558350 – HERMES, with the filing date of July 28, 1989; United States trademark registration No. 0368785 – HERMES with the filing date of March 1, 1939; United States trademark registration No. 2213940 – HERMES (logo), with the filing date of May 15, 1997; European Community trademark registration No. 008772428 –HERMES, with the filing date of December 1, 2009 and others.
Through extensive use around the world, the HERMES trademark has generated vast good will and has become famous in connection with luxury goods.
One of the Complainant's best-selling bags is the "Birkin bag". The Hermes "Birkin bag" was created in 1984 and named after actress and singer Jane Birkin. It is one of the most recognized bags in the fashion industry and is reputed for having an extremely long waiting list.
The Complainant also owns numerous trademark registrations for the mark BIRKIN around the world. For example: International trademark registration No. 686529 – BIRKIN, with the filing date of January 21, 1998, designated among others for China; French trademark registration No. 97691016 – BIRKIN, with the filing date of August 8, 1997; and United States trademark registration No. 78369087 – BIRKIN, with the filing date of February 17, 2004.
The Complainant also developed a formidable presence on the Internet and is the owner of several domain names, which contain the name "Hermes". For example: <hermes.com>, <hermes.pro>, <hermes.asia>, <hermes.fr> and <hermes.eu>.
The disputed domain name <buyhermesbirkin.com> was registered on June 21, 2010.
Currently, the disputed domain name redirects to <buyhermesbirkin.org> and resolves to a webpage, which offers for sale among others, what appears to be replicas of Hermes Birkin bags, while using the Complainant’s HERMES and BIRKIN marks.
The Complainant argues that the disputed domain name is identical or confusingly similar to the HERMES and BIRKIN trademarks, in which the Complainant has rights, seeing that it incorporates the HERMES and BIRKIN trademarks as a whole. The Complainant further argues that the addition of the gTLD ".com" is not of distinguishing effect.
The Complainant further argues that the addition of the descriptive word “buy” is insufficient to avoid confusing similarity between the HERMES and BIRKIN trademarks and the disputed domain name.
The Complainant further argues that the addition of the descriptive word “buy” is actually likely to increase the amount of consumer confusion, as it may indicate an official website where genuine Hermes Birkin bags are sold.
The Complainant further argues that the Respondent has no rights of legitimate interests in respect of the disputed domain name.
The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its HERMES or BIRKIN trademarks and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the term “Hermes” or "Birkin".
The Complainant further argues that it sells its goods worldwide, including in China, where the Respondent is located, and is the owner of multiple Chinese trademarks for HERMES and an international trademark for BIRKIN, notably in force in China.
The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to his/her website by creating a likelihood of confusion with the Complainant’s marks.
The Complainant further argues that the Respondent's sale of counterfeiting Hermes branded products, especially counterfeiting Hermes Birkin bags, while displaying the Complainant's trademarks, amounts to bad faith.
The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the HERMES and BIRKIN trademarks and products at the time he/she registered the disputed domain name.
Finally, the Complainant underlines that it has simultaneously submitted take down notices to the concerned registrar and hosting company, and has submitted a complaint to the authorities.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name <buyhermesbirkin.com> consists of Latin letters, rather than Chinese letters;
b) The disputed domain name <buyhermesbirkin.com> includes a word in the English language, namely “buy”;
c) The website associated with the disputed domain name is operated in English and refers to a product name in English, namely “Birkin”.
d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceeding.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark HERMES around the world. For example: Chinese trademark registration No. 4932845 – HERMES, with the filing date of October 8, 2005; Chinese trademark registration No. 4933050 – HERMES, with the filing date of October 8, 2005; French trademark registration No. 1558350 – HERMES, with the filing date of July 28, 1989; United States trademark registration No. 0368785 – HERMES with the filing date of March 1, 1939; United States trademark registration No. 2213940 – HERMES (logo) , with the filing date of May 15, 1997; European Community trademark registration No. 008772428 –HERMES, with the filing date of December 1, 2009 and others.
The Complainant also owns numerous trademark registrations for the mark BIRKIN around the world. For example: International trademark registration No. 686529 – BIRKIN, with the filing date of January 21, 1998, designated among others for China; French trademark registration No. 97691016 – BIRKIN, with the filing date of August 8, 1997; and United States trademark registration No. 78369087 – BIRKIN, with the filing date of February 17, 2004.
The disputed domain name <buyhermesbirkin.com> includes both of the Complainant's HERMES and BIRKIN registered trademarks and differs from them by the additional word “buy” and the additional gTLD “.com”.
The disputed domain name integrates the Complainant’s HERMES and BIRKIN trademarks in their entirety, as a dominant element.
The additional word “buy” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s HERMES and BIRKIN trademarks, as it is a descriptive element that refers to the buying of products, and as such is insignificant.
Previous UDRP panels have ruled that the mere addition of a non-significant element does generally not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of evidence shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its HERMES or BIRKIN trademarks or a variation of them. The Respondent did not submit a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the HERMES trademark since the year 1939. The Complainant also owns a registration for the BIRKIN trademark since the year 1997. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademarks vast goodwill. The Panel cites the following with approval: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Indeed, “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name leads Internet users to a website that engages in the marketing of what appears to be replicas of Hermes goods, especially Hermes Birkin handbags, which are displayed along with the Complainant’s HERMES and BIRKIN marks without its authorization.
The Respondent’s use of the Complainant’s marks to promote similar or identical goods to the goods being offered by the Complainant is in the present circumstances clear evidence in the Panel’s view that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its widely known HERMES and BIRKIN trademarks, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent makes of the disputed domain name to offer what appears to be quasi-identical and counterfeiting goods to the ones being offered by the Complainant constitutes bad faith on behalf of the Respondent (see Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).
Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademarks in the disputed domain name and the similarity between the disputed domain name and the Complainant’s marks, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 disputed domain name <buyhermesbirkin.com> be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: February 21, 2011