The Complainant is HERMES INTERNATIONAL of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Zhang Feng of Beijing, China.
The disputed domain names <discounthermeshandbags.net> and <thierryhermes.com> are registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2011. On July 4, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On July 5, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 8, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 11, 2011, the Complainant confirmed its 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 July 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2011.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 10, 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 is a French high fashion house established in established in 1837, specializing in leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods. One of Hermès' most recognized products today is its signature silk scarves. But Hermès is also recognized for its handmade luggage and handbag collections. The company does not use assembly lines, only one craftsperson may work on one handbag at a time, hand-stitching each individual piece. The company has never licensed any of its products and keeps tight control over the design and manufacture of its vast range of goods. Today, the Complainant is a high-end fashion house with a revenue of around 1.914 billion euros in 2009 and employs 8,000 people globally.
The Complainant is the registered owner of a large number of trade marks consisting or including the wording HERMES in France and abroad.
HERMES is for instance the registered owner of the following trade marks, notably in force in France, in the European Union, in the United States of America and in China:
HERMES, French nominative trade mark n° 1 558 350 of October 16, 1979, validly renewed (in force);
HERMES, Community nominative trade mark n° 008772428 of December 1, 2009;
HERMES, American nominative trade mark n° 2213940 of May 15, 1997 (in force);
HERMES, American nominative trade mark n° 71416562 of June 27, 1939 (in force);
HERMES, Chinese nominative trade mark n° 4932845 of October 8, 2005;
HERMES, Chinese nominative trade mark n° 4933050 of October 8, 2005;
HERMES & carriage device trade mark n° 1 377 454 of November 30, 1976 (in force);
HERMES & carriage device Community trade mark n° 008772436 of December 1, 2009;
HERMES & carriage device trade mark n° 73494010 of August 4, 1984 (in force);
HERMES & carriage device Chinese trade mark n° 4933036 of October 8, 2005;
HERMES International nominative trade mark n° 196756 of November 21. 1956 (in force).
These rights have been continuously used in commerce since their registration.
Furthermore, the Complainant also offers also for sale its luxurious goods online, through its official website located at “www.hermes.com” and uses its trade mark as domain name to promote its activities online. Customers are invited to buy many items online through the secured official Hermès’ website, located from all over the world. The Complainant is the owner of the following domain names:
<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 pointing to the official website of Hermès.
According to the WhoIs database, Zhang Feng is the registrant of the disputed domain names and is the Respondent in this case. The Respondent is apparently located in China, where the Complainant has many points of sale and it appears that the Respondent offers for sale unauthorized goods on its websites.
First, the Complainant asserts that the disputed domain names are identical or confusingly similar to its marks based on the following reasons:
1. That the gTld ".com" is not of distinguishing effect and must be removed from analysis. See Credit Industriel et Commercial S.A. v. OSED WIRELESS, CAC Decision No.100084 regarding <paiement-cic.com> and TAG HEUER SA v. JBlumers Inc./Jerald Blume, WIPO Case No. D2004-0871 regarding <faketagheuer.com>, <replicatagheuer.com> and <tagheuerreplicas.com>.
2. That the disputed domain names wholly reproduced letter-by-letter the Complainant’s HERMES trade mark. The incorporation of a trade mark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s mark. See Hermès International v. Hermes-Birkins.net, WIPO Case No. D2011-0514 regarding <hermes-birkins.net>.
3. That the addition of the name “thierry” and words “discount” and “handbags” to the mark HERMES in the disputed domain names does not eliminate the identity or at least the similarity between the Complainant’s registered and well-known trade mark and the disputed domain names. On the contrary, the Complainant contends that it strengthens the confusion, because of the direct relation for customers between the wordings “thierryhermes” and “discounthermeshandbags” and the business of the Complainant. Through this connection, customers are made to believe that the disputed domain names are linked to one of the official websites of the Complainant on the Internet. Customers would also wrongly believe that the disputed domain names belong to the Complainant or that the latter has authorized the Respondent to use the HERMES trade mark.
4. That the whole reproduction of a well-known trade mark, as the HERMES trade mark, per se generates a likelihood of confusion.
Second, the Complainant asserts that the Respondent has no rights or any legitimate interests in respect of the disputed domain names on the following grounds:
1. The Respondent is not currently and has never been known under the wording “hermes”, or “thierryhermes” or “discounthermeshandbags”. The Complainant conducted a trade mark search in the Chinese Intellectual Property Registry over the name "hermes". This search showed 62 registered trade marks which belonged to the Complainant. Thus, the Complainant is known on the Chinese market, where it has also many points of sale.
2. The Complainant claims that it did not know the Respondent before it registered the disputed domain names and that the Respondent is not, in anyway, related to its business, is not one of its agents and does not carry out any activity for or has any business with it. The Complainant has not licensed or authorized the Respondent in anyway.
3. The Complainant contends that its luxurious goods (leather goods, ready-to-wear, lifestyle accessories, perfumery goods) are sold throughout the world, including in China, through self-owned stores exclusively. The Complainant further contends that the Respondent’s online stores known by the disputed domain names are offering for sale numerous counterfeiting Hermès goods. This clearly shows the absence of any right or legitimate interest.
4. The Complainant contends that the right to use such mark as a basis for domain name requires an express authorization. In this case, the Complainant has never given any authorization or permission to the Respondent to register or to use the disputed domain names. See C. Crane Company Inc. v. Robbie Crossley, WIPO Case No. D2009-0815 regarding <geobulbs.com>; Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743 regarding <hermes-handbag.com>. Therefore, the sale activity made in bad faith under the disputed domain names does not confer any rights in the HERMES trade mark to the Respondent, neither the right to register a domain name including a mere reproduction of that trade mark combined with the first name of the Company Hermès International founding father or descriptive wordings. As a consequence, since the Respondent was not expressly authorized or permitted to “use the trademark as a basis for the domain names” and as its use of the disputed domain names does not meet the four requirements to be in connection with a bona fide offering, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith on the following grounds:
1. That the Respondent registered the disputed domain names in bad faith.
The Complainant argues that HERMES is a well-known mark and registering a domain name including the entire HERMES trade mark cannot be placed on the account of fortuity. In the Complainant’s opinion, the Respondent plainly registered and intended to register the disputed domain names to use and adopt the Complainant’s well-known HERMES trade mark. The mere absence of right or legitimate interest in respect of the disputed domain names further support the contention that the disputed domain names have not been registered in good faith. The Respondent has therefore registered the disputed domain names for the sole purpose of commercially benefitting from Internet traffic arriving at its website, which enables Internet users to purchase counterfeiting Hermès goods for low prices.
2. That the Respondent is using the disputed domain names in bad faith.
The Complainant points out that the websites “www.thierryhermes.com” and “www.discounthermeshandbags.net” advertise that at its store, the visitor will find Hermès goods for low prices. It is undisputed that the Complainant’s trade mark HERMES and its carriage device are reproduced on these websites. The disputed domain names are therefore used by the Respondent to offer for sale counterfeiting Hermès branded products (in US Dollars), which are considerably cheaper than the original Hermès products (bags, scarves, jewellery, wallets) of the Complainant. It is the Complainant’s contention that the sale of counterfeiting goods under the Complainant’s trade marks amounts to bad faith. Indeed, the sale of fake Hermès products could cause considerable damage to the Complainant’s trade mark rights and its legitimate business interests on HERMES. Such registration, for the purpose of disrupting the business of the Complainant (the Respondent being seeking to use the HERMES marks to induce Internet users to visit its websites and purchase fake Hermès products, for low prices), should be considered as bad faith use. See TAG HEUER SA v. JBlumers Inc./Jerald Blume, WIPO Case No. D2004-0871 regarding <faketagheuer.com>, <replicatagheuer.com> and <tagheuerreplicas.com>; Moncler S.r.l v. Andy Huang, WIPO Case No. D2010-1669 regarding <buy-moncler.com>, <buymonclerjackets.com> and <moncler-jackets.net>; Hermès International v. heigens benjmin/Domains By Proxy, Inc., and Linda Bloom/PRIVATE WHOIS SERVICE, WIPO Case No. D2011-0363 regarding <greathermes.com> and <designerbirkin.co>. The Complainant contends that all these facts show that the Respondent is only interested by the financial gain, generated by its websites, to the detriment of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. The Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
(a) The disputed domain names are registered in Latin characters and are identically pronounced and spelled whatsoever in English or in French;
(b) The wording “thierryhermes” refers to the founder’s name of the Complainant’s company Hermès, which is a French company; the wording “discounthermeshandbags” refers to one of the Complainant’s goods;
(c) The Respondent has hosted its websites “www.thierryhermes.com” and “www.discounthermeshandbags.net” by an American hosting provider named Take 2 Hosting Inc.;
(d) The Respondent operates an e-business website under the disputed domain names, for selling notably handbags/wallets/belts/scarves/bracelets/pendants/sandals shipped and delivered worldwide. It is obvious that the main language of communication for the Respondent involved in this international activity is English.
(e) From content of the web pages, it is obvious that the Respondent has no real intention to sell products to the Chinese market;
(f) All information contained in the site is in English;
(g) The only currency supported by the e-business sites is US Dollars, excluding Chinese Yuan. The site is obviously not dedicated to Chinese customers.
(h) The official portal of the registrar HiChina Zhicheng Technology Ltd. is also available in English language (at the following address: “http://en.hichina.com”)
All the above factors suggest that the use of English would not prejudice the Respondent’s ability to defend itself in these proceedings. On the other hand, the Complainant is not able to communicate in Chinese. A Chinese language proceeding would be consequently unduly delayed and the Complainant would have to incur substantial expenses for translation.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
Paragraph 11 of the Rules provides:
“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.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case.
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Complainant has exhausted all ways to communicate with the Respondent but to no avail; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the HERMES marks in relation to a wide range of goods such as clothing, bags, perfumes, kitchen utensils etc in France and many countries in the world. The Panel finds that the Complainant has rights and continues to have such rights in the relevant HERMES marks.
The disputed domain names consist of Complainant’s mark HERMES in its entirety, with the name “Thierry’ in one and the words “discount” and “handbags” in the other, as well as the suffixes “.com” and “.net”. In assessing the degree of similarity between the Complainant’s trade marks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s HERMES marks and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user.
The Panel finds that the term “hermes” in the Complainant’s HERMES marks is the distinctive portion of the Complainant’s marks and it has been reproduced in its entirety in the disputed domain names. The Panel finds the “hermes” portion to be the most prominent part of the disputed domain names which will attract consumers’ attention. It is an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor. Furthermore, the addition of the name “Thierry” and the words “discount” and “handbags” in the respective disputed domain names do not provide additional specification or sufficient distinction from the Complainant or its HERMES marks. The Panel accepts the Complainant’s contention that the addition does not eliminate the identity or at least the similarity between the Complainant’s registered and well-known trade mark and the disputed domain names. On the contrary, it strengthens the confusion, because of the direct relation for customers between the wordings “Thierry Hermes” and “discounthermeshandbags” and the business of the Complainant.
Thus, the Panel finds for the Complainant on the first part of the test.
The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names.
Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of “hermes” in his/her business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;
3. There is no indication that the Respondent is commonly known by the disputed domain names and/or is using the domain names in connection with a bona fide offering of goods or services;
4. The Complainant and its HERMES marks enjoy a worldwide reputation including China, with regard to its luxurious goods (leather goods, ready-to-wear, lifestyle accessories, perfumery goods).
Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the HERMES mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel finds for the Complainant on the second part of the test.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by the respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. 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 (leather goods, ready-to-wear, lifestyle accessories, perfumery 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.
Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the Panel finds that the term “hermes” in Complainant’s HERMES marks which have acquired a worldwide reputation in luxurious goods (leather goods, ready-to-wear, lifestyle accessories, perfumery goods) market is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of his choice in the disputed domain names. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain names were registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit there from.
Given the worldwide reputation of the Complainant’s HERMES marks in the luxurious goods (leather goods, ready-to-wear, lifestyle accessories, perfumery goods) market, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is identical or confusingly similar to the Complainant’s widely known and distinctive trade mark, intended to ride on the goodwill of the Complainant’s trade mark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. In fact, the Complainant has adduced evidence to show that the Respondent has offered for sale unauthorized goods bearing the Complainant’s HERMES marks on the websites known by the disputed domain names. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain names and the conduct of the Respondent are indicative of registration and use of the disputed domain names in bad faith.
The Panel finds for Complainant on the third part of the test.
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, <discounthermeshandbags.net> and <thierryhermes.com>, be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: August 24, 2011