Complainant is Hermes International, France, represented by SCAN Avocats AARPI, France.
Respondent is Raj Pal Senna, OpCo UK Ltd, United Kingdom.
The disputed domain name <hermes-sellier.com> is registered with 1&1 IONOS Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 30, 2020.
The Center appointed Roberto Bianchi as the sole panelist in this matter on April 3, 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.
Complainant is the holding company of Groupe Hermès, a French high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery and luxury goods. In 2018, Complainant had a turnover of around EUR 6 billion. Complainant has over 14,000 employees worldwide.
Hermès Sellier, a subsidiary of Complainant, manufactures, inter alia, travel articles, leather goods and saddles.
Complainant owns, inter alia, the following trademarks:
HERMÈS, French word trademark, Registration No.1558350, registered on July 28, 1989, duly renewed in 2019, covering products and services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;
“HERMÈS”, International word trademark Registration No.196756, with priority of French trademark No. 51503428, registered on November 21, 1956, renewed, covering products in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, and 34;
HERMÈS, European Union Trade Mark (word), Registration No. 008772428, filed on December 1, 2009 and registered on April 2, 2012, covering products and services in Classes 3, 6, 8, 9, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35, 38, 41, 43, and 44.
Complainant also owns the following domain names: <hermes.fr>, registered on March 18, 1996, <hermes.com>, registered on November 24, 1997, <hermes.net>, registered on September 18, 2010, <hermes.us>, registered on April 22, 2002, <hermes.jp>, registered on March 26, 2001, and <hermes.biz>, registered on June 4, 2006.
The disputed domain name was registered on December 18, 2014.
Currently, the disputed domain name does not resolve to any active website. According to evidence filed by Complainant, the disputed domain name used to resolve a parking page containing pay-per-click links.
Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s prior rights as it reproduces letter-by-letter its HERMÈS trademarks, domain names and company name, with the addition of a descriptive and generic term related to its leather business. Such addition does not grant self-distinctiveness to the disputed domain name. Besides, the disputed domain name also incorporates in its entirety the corporate name of Hermès Sellier, a subsidiary of Complainant.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has never given any authorization or permission to Respondent to register or use its HERMÈS trademarks. Respondent cannot be in any way related to Complainant. Respondent is not an authorized distributor of Hermès International as Complainant has never licensed any of its products or given any authorization to any third party to register or to use its HERMÈS trademarks.
The fact that Respondent did not reply to Complainant’s cease-and-desist letter dated January 27, 2020 reveals that Respondent does not intend to cooperate and resolve this dispute amicably.
The disputed domain name was registered and is used in bad faith. Complainant’s HERMÈS trademarks and domain names were registered many years before the disputed domain name was registered and are well-known in France and abroad. Respondent could not have been unaware of Complainant's prior HERMÈS trademarks and domain names when he registered the disputed domain name in view of the renown and the distinctiveness of the name “Hermès” – any search for “Hermès” conducted with a search engine leads in the first place to websites relating to Complainant and its activities.
The disputed domain name redirected to a parking page containing pay-per-click links resolving to websites offering goods competing with Complainant’s products, which attests to Respondent’s bad faith. Respondent is likely to (i) have registered or acquired the disputed domain name for selling, renting or otherwise transferring it to Complainant or its competitors and (ii) use it to attract, for commercial gain, Internet users, to its website by creating a likelihood of confusion with Complainant’s widely known prior rights.
Respondent did not reply to Complainant’s contentions.
By submitting printouts taken from official trademark databases, Complainant has satisfied the Panel that it has rights in the HERMÈS trademark. See section 4 above.
The Panel notes that the disputed domain name incorporates Complainant’s mark HERMÈS in its entirety, with the addition of a hyphen plus the dictionary, or common term “sellier”, a French word meaning “saddler” or “saddle maker”. It is well established that such kind of additions would not prevent a finding of confusing similarity between a domain name and the mark it incorporates. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Besides, “Hermès Sellier” is the corporate name of a subsidiary of Complainant. Annex J to the Complaint.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the HERMÈS trademark, in which Complainant has rights.
According to the relevant WhoIs data provided by the Registrar to the Center, the registrant of the disputed domain name, i.e., Respondent, is “Raj Pal Senna, OpCo UK Ltd”. The Panel does not see any allegation or evidence on the casefile indicating that Respondent is known – commonly or otherwise – by the disputed domain name. Thus, Policy paragraph 4(c)(ii) clearly does not apply.
Complainant contends that it never gave any authorization, permission or license to Respondent to register or use the HERMÈS trademark. In this regard, the Panel does not see any evidence of any relation whatsoever between Complainant and Respondent.
Complainant has shown with a printout taken from the website at the disputed domain name that the website contains various “liens associés” (associated links) such as “Boutique”, "Montre Homme Luxe” (luxury men’s watch), “Montre Homme” (men’s watch), “Mode Homme” (men’s fashion), et cetera. On the same page, there is a text reading, “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).”
In the view of the Panel, this use of the disputed domain name most likely is aimed at obtaining monies from a click-through scheme. The Panel observes that on the website there is a text claiming independence from the advertisers to which the related links are pointing. However, such independence does not mean that Respondent is not looking to obtain click-through profit from the confusion of Internet users presumably looking for Complainant’s renown fashion articles. Nor is such legend a disclaimer that Respondent does not have any relation to Complainant or to Hermès Sellier. See WIPO Overview 3.0, section 3.5 (“Can third‑party generated material “automatically” appearing on the website associated with a domain name form a basis for finding bad faith? Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”).
Since the disputed domain name entirely reproduces Complainant’s HERMÈS famous mark and slavishly copies the name of a subsidiary of Complainant, a well-known manufacturer of travel and leather fashion goods, it is clear that Respondent’s profit should derive from the unauthorized use of Complainant’s mark HERMÈS. This is neither a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers, pursuant to Policy paragraph 4(c)(iii).
Thus, Complainant has succeeded in raising a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent has failed to present any explanation for its reasons to register and use the disputed domain name as shown. Previously, Respondent also had failed to respond to Complainant’s cease-and-desist letter. In addition, presently the disputed domain name does not resolve to any active website.
For these reasons, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel notes that Complainant is a French high fashion house established in 1837. Complainant has registered its HERMÈS trademark several decades before the registration of the disputed domain name. The Panel also notes that the “related links” displayed on the website at the disputed domain name clearly refer to men’s articles that might be marketed by Complainant.
In addition, the Panel agrees with prior UDRP panels that Complainant’s mark HERMÈS is famous with regard to fashion and luxury goods. See HERMES INTERNATIONAL v. Zhang Feng, WIPO Case No. D2011-1125 (“Taking into account the worldwide reputation of the Complainant and its HERMES marks, as well as the market presence of the Complainant and its marks in the Chinese market (evidenced by the registration of the HERMES marks in China and the sale of its luxurious goods [. . .], the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain names.”); see also Hermès International v. PrivacyProtect.org / Frank.will, WIPO Case No. D2012-1551 (“It is highly unlikely that the Respondent would not have had knowledge of the Complainant’s trademark and its worldwide fame while registering the disputed domain name.”). See also Hermès International v. Private Whois Service, WIPO Case No. D2012-0264 (“The Complainant’s marks have a global reputation …”)
Therefore, the Panel concludes that Respondent perfectly knew of, and targeted Complainant and its HERMÈS marks at the time of registering the disputed domain name. The circumstances of this case clearly indicate that such registration was in bad faith.
The Panel further notes that, as seen above, the website at the disputed domain name displayed a number of “associated links” offering fashion and luxury articles of the kind manufactured and marketed by Complainant and its subsidiaries, such as men’s watches and other fashion goods, without any authorization or license from Complainant. It is clear that by creating a likelihood of confusion among Internet users as to the source of its website, Respondent attempted to attract them for commercial gain, most likely aiming at obtaining monies from a click-through scheme. This is a circumstance of registration and use in bad faith, pursuant to Policy paragraph 4(b)(iv).
Lastly, the fact that presently the disputed domain name ceased to resolve to any active website suggests that Respondent does not contemplate any use for the disputed domain name other than as shown, i.e., in bad faith.
The Panel finds that the disputed domain name was 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 <hermes-sellier.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: April 17, 2020