The Complainant is Hermes International, France, represented by Scan Avocats AARPI, France.
The Respondent is Contact Privacy Inc., Customer 1244176691 / Contact Privacy Inc., Customer 1246840074 / Devin Yu / Xingyao Yu, Canada.1
The disputed domain names <hermesupdater.com> and <hupdater.com> are registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2020, concerning the disputed domain name <hermesupdater.com>. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with that disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <hermesupdater.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 20, 2020, adding the disputed domain name <hupdater.com>.
The Center verified that the Complaint and the amended Complaint (hereinafter named as the “Complaint” when referring to both together) 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 the Respondent of the Complaint, and the proceedings commenced on April 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2020. On April 20, 2020, the Center received an informal Respondent communication. The Response was filed by the Respondent Devin Yu with the Center on May 4, 2020.
On May 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification to confirm the registrant of the disputed domain name <hupdater.com> as identified in the amended Complaint. On the same day, the Registrar transmitted by email to the Center its response disclosing registrant and contact information for the disputed domain name <hupdater.com>.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on May 28, 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.
On June 2, 2020, the Panel issued a Procedural Order inviting the Complainant to provide by June 5, 2020, arguments or evidence demonstrating that all the registrants for the disputed domain names are, in fact, the same entity/person and/or that all disputed domain names are under common control. The same procedural order further invited the registrants for the disputed domain names to submit arguments or evidence by June 9, 2020, regarding the Procedural Order, including comments to the Complainant’s submission in response to the Procedural Order. The Complainant submitted its response to the procedural order on June 5, 2020. The registrants for the disputed domain names did not submit any comments to the Procedural Order.
The Complainant is a French high fashion house established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods, which operates under the trademarks HERMÈS and H. The Complainant had a turnover of around 6 billion euros in 2018 and employs more than 14,000 people globally.
The Complainant owns numerous trademark registrations for HERMÈS alone or in combination with other word or figurative elements, as well as for H, in various formats, worldwide, including:
- International Trademark HERMÈS (word) No. 196756, registered on November 21, 1956, 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 and 34;
- United States Trademark HERMÈS (word) No. 4278653, registered on January 22, 2013, in classes 3, 6, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35, 38, 41, 43, and 44;
- International Registration (semi-figurative) No. 900015 - H, registered on May 29, 2006, in classes 6, 8, 14, 16, 18, 21, 24, 25, 26, 28 and 34; and
- Canadian Trade Mark H (semi-figurative) No. TMA822444 (or 1343554), registered on April 18, 2012, in classes 18 and 22 (collectively the “HERMES mark” and “H mark”).
The Complainant further owns the domain name <hermes.com> (registered on November 24, 1997), which resolves to its official website where it offers for sale its luxury goods, as well as other domain names that direct to the same website, including <hermes.fr> (registered in March 18, 1996), <hermes.net> (registered on September 18, 2010) and <hermes.jp> (registered on March 26, 2001). The Complainant’s official website reproduces the H mark in its browser tab and the HERMES mark (with its well-known carriage logo) in the middle of its heading.
The disputed domain name <hermesupdater.com> was registered on March 20, 2019, and it is currently inactive, resolving to a page with an Internet browser error message. However, according to the evidence filed by the Complainant, it was previously linked to a website, in English language, providing registered login access services self-defined as “HERMES in-stock email notification service”. This website included in its heading a representation of a red bag and the words “HERMES UPDATER” (all in red capital letters), and in its footer an email address, Instagram, Little Red Book and WeChat ID accounts, with no other information about the owner of the site or of the disputed domain name <hermesupdater.com>. The services provided by this website required registration and subscription, and refer to payment by credit card or WeChat pay.
The disputed domain name <hupdater.com> was registered on April 3, 2020. It resolves to a website that shows an initial message, upon entering in the site, referring to the above-mentioned “HERMES in-stock email notification service”, including at the end of the message an email address, a Little Red Book account and the phrase “we are not in association with Hermes”. This website reproduces a red bag in its browser tab and provides registered login access for “real time in-stock notification” services, not including any further information about its owner or the owner of the disputed domain name <hupdater.com>. According to the evidence provided by the Complainant, this website follows the same combination of colors (grey and red letters on a white background) and the same design or look and feel of the website that was linked to the disputed domain name <hermesupdater.com> and was initially referring to “hermesupdater” as WeChat ID account (for further information).
The Complainant’s trademarks are used in commerce since 1951, being well-known worldwide, and having a leading position in its sector. The disputed domain names are confusingly similar to these marks, as they incorporate the HERMES and H marks in their entirety in combination with the generic Top-Level Domain (“gTLD”) “.com”, which is an irrelevant technical requirement, and the suffix “updater”, which is a descriptive term, insufficient to avoid the confusing similarity. The term “updater” will be perceived as directly referring to the services offered under the disputed domain names’ websites.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has never licensed any third party any of its products and has never licensed, authorized, or otherwise permitted the Respondent to use its trademarks. Further, to the best of the Complainant’s knowledge, the Respondent is not currently and has never been known under the names “hermes” or “h”.
The Respondent deliberately registered the disputed domain names targeting the Complainant’s trademarks with the intent to take unfair advantage of their reputation. Due to the strong reputation of the Complainant’s trademarks worldwide, it is highly likely that the Respondent knew of their existence at the time the disputed domain names were registered; a simple search in any Internet search engine reveals the Complainant’s rights. In addition, in view of the services provided by the Respondent’s websites, which are related to the Complainant’s activity and evolution of stocks, there is no doubt that the Respondent was aware of the existence of the Complainant’s trademarks.
The Respondent is using the disputed domain names in bad faith. The disputed domain name <hermesupdater.com> resolves to a website providing alleged stock update information services regarding the Complainant’s products supply in its official website. Likewise, the disputed domain name <hupdater.com> resolves to a very similar website providing identical services, was registered a day after the Complaint was filed and refers to “hermesupdater” as WeChat account for further information. Both disputed domain names are used in bad faith, in order to commercially benefit from Internet traffic arriving to the Respondent’s websites, taking advantage of the Complainant’s renown trademarks to mislead and attract Internet users who may believe that the services offered are provided by the Complainant, its subsidiaries or a third party authorized by the Complainant. The mere absence of rights or legitimate interests of the Respondent points to bad faith, with the possibility that the disputed domain names are used in a fraudulent activity to obtain personal data including bank data. The Complainant sent a request to the Registrar and the hosting provider of the disputed domain name <hermesupdater.com> to cease the unfair use of its trademarks.
The Complainant has cited several previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain names.
The Complainant requests the Panel to accept its consolidated Complaint and to render a single decision regarding the disputed domain names, as the circumstances of the case show that both disputed domain names and corresponding websites are subject to common control, the consolidation being fair and equitable to all parties.
Although the registrants’ first names and email addresses differ, they share the same last name, address and telephone number, being at least from the same family and working together at the same location. Furthermore, the email address linked to the disputed domain name <hupdater.com> contains the first name “Devin”, which corresponds to the first name of the registrant of the disputed domain name <hermesupdater.com>. Both disputed domain names are registered with the same Registrar, and, at some point, both had the same hosting server. In addition, both disputed domain names point to very similar websites, providing identical services and referring to the same WeChat account for further information.
The Complainant has cited several previous decisions under the Policy that it considers supportive of its request.
The disputed domain name <hupdater.com> is not identical or confusingly similar to the Complainant’s trademarks. The Complainant holds trademark rights for semi-figurative specific designs including the letter “h”, but not for this letter itself, which is generic not having branding value. Without the specific designs, it is impossible for most people to relate the letter “h” to the Complainant and its products. In Google, the letter “h”, the term “hupdater” and the term “h updater” yield no results related to the Complainant.
The Respondent has the right to use the letter “h” in combination with the term “updater”, having legitimate interests in respect of the dispute domain name <hupdater.com>. The Respondent uses the letter “h” to distinguish its notification service from another one, identified by the letter “l”, linked to the domain name <lupdater.com>, “related to another online store”, planning to have more alphabet characters plus “updater” for different online stores in the future.
The disputed domain name <hupdater.com> was registered and is being used in good faith for a legitimate service, not pretending to impersonate the Complainant, but to provide information regarding its products, without any intention to mislead Internet users. The information about the HERMES products’ availability is not subject to intellectual property or any ownership. Users do not need permission to access the Complainant’s website and see if a product is available. The Respondent watches the publicly available content in the Complainant’s website and provides availability information reports to its subscribers. The Complaint has not shown how Internet users may be misled. Users visiting the Respondent’s website are specifically looking for availability information services, and not for the Complainant’s official website. Further, the Respondent uses legitimate third parties to process all payments, following industry security standards and not processing or storing any personal banking data. There has been some technical delays in removing items related to the HERMES mark in the Respondent’s previous website, but these problems have been solved in the current website.
The Respondent did not submit any comments to the Complainant’s Response to the Panel Order.
In an email communication to the Center dated April 20, 2020, the Respondent admitted that its initial brand and domain name was the disputed domain name <hermesupdater.com>, but “upon receiving the Complaint”, it “reviewed and removed all text/branding with Hermes”.
The Panel notes the Complainant’s contentions on the consolidation of a Complaint filed against multiple registrants. The Panel further notes the fact that the Respondent Devin Yu (registrant on record of the disputed domain name <hermesupdater.com>) has filed a Response including also arguments regarding the registration and use of the disputed domain name <hupdater.com> (registered on the name of Xingyao Yu). The circumstances of the case show that the disputed domain names are subject to common control, and the Respondent has not contested the Complainant’s request for consolidation. Therefore, the Panel considers the consolidation fair and equitable to all parties, accepting the addition of the disputed domain name <hupdater.com> to this proceeding, in accordance with the Policy and the Rules.
It is well accepted that the first element functions primarily as a standing (or threshold) requirement. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name is normally considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, in specific limited cases, the broader case context, such as website content trading off the complainant’s reputation or a pattern of multiple respondent’s domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity. Particularly, when it appears from the overall facts and circumstances of a case that the respondent registered the domain name precisely because it believed that it was confusingly similar to the complainant’s mark. It is further to be noted that the applicable “gTLD” in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8 and 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant indisputably has rights in the registered trademarks HERMES and H (under different formats), respectively incorporated in the disputed domain names in their entirety followed by the term “updater”, which does not prevent a finding of confusing similarity with these marks.
The mark HERMES is clearly recognizable in the disputed domain name <hermesupdater.com> as it is reproduced in its entirety. Likewise, the textual element of the H mark is recognizable in the disputed domain name <hupdater.com>, and the circumstances of the case support a finding of confusing similarity, particularly noting the content of the website and the existence of a previously registered disputed domain name targeting the Complainant’s mark HERMES. The website linked to the disputed domain name <hupdater.com> is almost identical to the website that was linked to the disputed domain <hermesupdater.com>, with identical combination of colors, design, and look and feel, providing identical services and this website reproduces the design of a red bag in its browser tab. Further, the website linked to the disputed domain name <hupdater.com> shows an initial message “Hermes product in-stock notification”, upon entering in the site, referring to the mark HERMES, and the Respondent has admitted registering the disputed domain name <hupdater.com> upon receiving the Complaint. The Panel considers that all these circumstances show a targeting of the Complainant’s trademarks by the disputed domain names which support the Complainant’s standing to bring the present case, and that the Respondent has chosen the disputed domain names due to its similarity and connection with the Complainant’s trademarks. (See also WIPO Overview 3.0 at section 1.3 “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”)
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain names, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain names in order to rebut the Complainant’s prima facie case.
The Respondent has not replied to the Complainant’s contentions regarding the disputed domain name <hermesupdater.com>, and the website that was linked to this disputed domain name has been apparently taken down, being currently inactive. However, according to the evidence provided, the website at <hermesupdater.com> was highly similar to the one available at <hupdater.com>.
Regarding the disputed domain <hupdater.com>, the Respondent alleged choosing the letter “h” and the term “hupdater” simply to distinguish its notification service from “another online store” identified by the letter “l” linked to the domain name <lupdater.com>, planning to use more alphabet characters plus “updater” in domain names to identify other “online stores” in the future.
The Panel notes that the letter “h” has no apparent connection to the Respondent’s name or business, and the Respondent has not stated why it chose precisely the letter “h” and not any other letter of the alphabet to identify its online business. The Respondent claims to have a plan of alphabet characters plus “updater” in domain names for “online stores”, but precisely it has registered the disputed domain name with the letter “h”, which corresponds to the initial of the Complainant and its reputed HERMES mark (as well as being a registered mark itself). In addition, the Panel notes that the Respondent registered first the disputed domain name <hermesupdater.com> and later on the disputed domain name <hupdater.com>. In this regard, the Respondent has admitted registering the disputed domain name <hupdater.com> upon receiving the Complaint, with the intention to remove “all text/branding with Hermes” in its prior website (under <hermesupdater.com>). However, the Panel notes that the Respondent’s current website (under <hupdater.com>) still refers to the HERMES mark in an initial message entering the site, in a heading in red big letters (“HERMES in-stock email notification service”). Furthermore, the current website is almost identical to the prior one, providing identical services, containing a design of a red bag in its browser tab and without reference to the owner of the site or of the disputed domain <hupdater.com>. An initial message to the site, which needs to be closed in order to see the content of the site, includes the indication “we are not in association with Hermes” at the bottom in black letters (and in smaller font than its title).
Merely registering a domain name comprised of a letter and a dictionary word does not by itself automatically confer rights or legitimate interests on the Respondent. From the evidence, the Panel finds that the Respondent seeks to capitalize on the reputation and goodwill inherent on the Complainant’s marks. See section 2.10, WIPO Overview 3.0.
For the sake of completeness, noting that the Respondent mentioned that its business model is connected to online stores, that the website at <hermesupdater.com> referred to payment by credit card or WeChat pay, and that the website at the disputed domain name <hupdater.com> offered a service adjunct to or included in the Complainant’s own services (which online shop provides information about the availability of its products in its official website and physical stores), the Panel will analyze the doctrine related to nominative (fair) use by resellers, distributors or service providers. Under the “Oki Data test” (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) to establish a bona fide offering of goods or services as a reseller or distributor of the Complainant’s products, the Respondent must comply with certain requirements, including accurate and prominent disclosure of its relationship or lack of relationship with the trademark holder and the actual offer of the goods or services at issue. See section 2.8 of the WIPO Overview 3.0.
In this respect, the Panel does not consider the phrase “we are not in association with Hermes” a prominent disclosure of its lack of relationship with the Complainant. As this phrase is included at the bottom of an initial message, which needs to be closed by the user in order to access to the site, and it is written in smaller font than the title of the message, which refers to the HERMES mark, the Panel considers that very likely this phrase will be unnoticed. The user will probably close this initial message after reading its content (in a quick manner if at all), probably without noticing said phrase, but only the title of the message (“HERMES in-stock email notification service”), written in larger font and red colored letters.
The Panel further notes that the Respondent has not produced any evidence related to its actual business, about providing the alleged in-stock notification services offered in its website, or any evidence of its services being connected to HERMES original goods. The website that was available at the disputed domain name <hermesupdater.com> referred to payment by credit card or WeChat pay. The Respondent has not provided information about the actual notifications forwarded to its subscribers, prices of its services, number of subscribers, etc., and repeatedly alludes in the Response, in relation to its business, to the concept of an “online store”. Therefore, the Panel considers that, beyond the intent to capitalize the connection with the Complainant’s trademarks, the real nature of the Respondent’s business through the disputed domain names is not clear and the Respondent has not satisfied the requirements of the Oki Data test.
The disputed domain names incorporate the Complainant’s HERMES and H marks followed by the term “updater” that allude to services provided by the Complainant in its official website, which includes information about its products availability and stock. The Panel considers that the disputed domain name <hermesupdater.com> carries a risk of implied affiliation and confusion that may lead Internet users to believe that the disputed domain name is owned or related to the Complainant or to one of the Complainant’s subsidiaries or stores. See section 2.5.1 of the WIPO Overview 3.0.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not sufficiently rebutted the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
All cumulative circumstances of this case point to bad faith registration and use of the disputed domain names: (i) the Complainant’s trademarks HERMES and H are well-known worldwide; (ii) the Respondent registered first a disputed domain name incorporating in its entirety the Complainant’s well-known trademark HERMES, adding a term (“updater”) that may refer to the same services provided by the Complainant in its official website, intrinsically creating a likelihood of confusion and affiliation; (iii) according to the evidence provided by the Complainant, this first disputed domain name, <hermesupdater.com>, was used to host a website offering services related to the Complainant’s products, and its official online sale website, including prominently the Complainant’s well-known trademark HERMES in its heading, referring to payment by credit card or WeChat pay, and not disclosing the lack of relationship with the Complainant, its subsidiaries or its stores and its trademarks; (iv) this first Respondent’s website did not offer any information about the company providing the services it offered apart from the name “Hermes Updater”, indicating an email address and various social media accounts as only contact information; (v) apparently, the said website has been taken down, being the disputed domain name <hermesupdater.com> currently inactive; (vi) “upon receiving the Complaint”, very likely in order to avoid its consequences, the Respondent registers a second disputed domain name following a similar composition used in the first disputed domain name (trademark plus “updater”), substituting the HERMES mark for the H mark, still as a reference to the Complainant (who uses the H mark to identify its products and in the browser tab of its official website); (vii) the disputed domain <hupdater.com> is linked to a website almost identical to the first Respondent’s website, initially indicating the same contact information and including an initial message connecting the new website to the HERMES mark; (viii) similarly, there is no indication in the current website about the company providing the services it offers, including only an email address and various social media accounts as contact information; and (ix) the only indication about the lack of relationship of this website with the Complainant’s trademarks, is included in small letters at the bottom of an initial message, not prominently displayed in the website itself.
In cases where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith, especially one that it is not prominent. See section 3.7, WIPO Overview 3.0.
Further, the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See sections 3.3. and 4.2, WIPO Overview 3.0.
On the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain names were very likely registered and used, targeting the Complainant’s trademarks with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademarks, trying to misleadingly attract Internet users to the Respondent’s websites.
The Respondent has registered and used two disputed domain names targeting the Complainant’s trademarks, and has alluded to an existing business related to more alphabet characters plus “updater” domain names to identify other “online stores”, indicating as an example the domain name <lupdater.com>. The Panel notes that the domain name <lupdater.com> was registered at the same date as the disputed domain name <hupdater.com>, and the website linked to it includes an initial message, similar to the one included in the website linked to the disputed domain name <hupdater.com>, “Subscribe to H Updater for Hermes notification - www.hupdater.com”. These circumstances do not exonerate the Respondent but instead affirms the targeting of the well-known trademarks of the Complainant.
All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 names, <hermesupdater.com> and <hupdater.com>, be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: June 15, 2020
1 The Panel will consider and refer to Devin Yu and Xingyao Yu collectively as the Respondent or the registrants of the disputed domain names (unless otherwise indicated when referring individually to one of them).