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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hermes International v. Domain Administrator, MMGA Domains, LLC

Case No. D2014-1760

1. The Parties

The Complainant is Hermes International of Paris, France, represented by Fidal, France.

The Respondent is Domain Administrator, MMGA Domains, LLC of Miami, Florida, United States of America ("USA"), self-represented.

2. The Domain Name and Registrar

The disputed domain name <hermes.clothing> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2014. On October 21, 2014, the Center received an email communication from the Complainant requesting to suspend the proceedings and on October 22, 2014, the Center suspended the proceedings until November 22, 2014. The proceedings were re-instituted on November 18, 2014 and the Response was filed with the Center on November 27, 2014.

The Center appointed John Swinson as the sole panelist in this matter on December 9, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Hermes International, a French high fashion house established in 1837, specialising in leather, ready-to-wear, lifestyle accessories, perfumery, and luxury goods. The Complainant had a turnover of around 3.75 billion Euros in 2013 and employs 8,000 people globally.

The Complainant has registered nearly 100 trade marks throughout the world, including:

- HERMES, French nominative trade mark filed on October 16, 1979, No. 1558350;

- HERMES, American nominative trade mark filed on March 1, 1939, No. 0368785; and

- HERMES, International nominative trade mark filed on November 21, 1956, No. 196756,

(collectively, the "Trade Mark").

The Complainant also owns the domain name <hermes.com>, which directs to its official website where it offers for sale its luxury goods. The Complainant also owns the following domain names:

- <hermes.fr>;

- <hermes.com>;

- <hermes.pro>;

- <hermes.asia>; and

- <hermes.net>.

All of these domain names redirect to the official website of the Complainant or invite internet users to visit the official website.

The Respondent is MMGA Domains, LLC of the United Stastes of America.

The Respondent registered the Disputed Domain Name on February 5, 2014.

The website at the Disputed Domain Name redirects Internet users to the Respondent's official website, at which Internet users can purchase specific domain names which are offered for sale by the Respondent.

5. Parties' Contentions

A. Complainant

The Complainant's contentions are as follows.

Identical or Confusingly Similar

The Complainant submits that the new generic Top Level Domain ("gTLD") ".clothing" is not of distinguishing effect and must be removed from analysis. The Disputed Domain Name otherwise incorporates the Trade Mark in its entirety. The whole reproduction of a trade mark so well-known as the Trade Mark is per se generating a likelihood of confusion.

The Complainant further submits that although the ".clothing" gTLD must be removed from analysis, the new gTLD is insufficient to avoid confusing similarity, and will, on the contrary, suggest to Internet users that the Disputed Domain Name is related to the Complainant and its business.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons:

- To the Complainant's knowledge, the Respondent is not currently and has never been known by the Trade Mark. Further, the website at the Disputed Domain Name does not use the Trade Mark to designate the Respondent's services.

- The Respondent is not in any way related to the Complainant's business, and does not carry out any activity for, or have any business with, the Complainant. The Complainant has not authorized or given permission to the Respondent to register or use the Disputed Domain Name.

- The Complainant does not license any of its products and keeps tight control over the design and manufacture of its goods.

Registered and Used in Bad Faith

The Complainant submits that the Respondent registered the Disputed Domain Name in bad faith for the following reasons:

- Given the strong reputation of the Trade Mark throughout the world, there is a prima facie presumption that the Respondent registered the Disputed Domain Name for the purpose of selling it to the Complainant or one of its competitors, or that it was intended to be used for commercial gain to attract Internet users to the website by creating a likelihood of confusion with the Trade Mark (see, e.g., Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020).

- The Trade Mark was registered by the Complainant in the USA and in France many years before the Disputed Domain Name was registered.

- The absence of rights or legitimate interests in the Disputed Domain Name should point out that the Disputed Domain Name has not been registered in good faith.

The Complainant submits that the Respondent is using the Disputed Domain Name in bad faith as Internet users may believe that the website at the Disputed Domain Name is the Complainant's official website and they would be right to expect to find information related with the Complainant or at least its luxury goods. This intentional redirection creates an increase unwarranted traffic for the Respondent's official website, and damages the reputation of the Complainant.

B. Respondent

The Respondent's contentions are as follows.

Informal Response

In an informal response dated October 8, 2014, the Respondent stated that the Disputed Domain Name was initially registered in the hope of entering an affiliate agreement with the Complainant.

Identical or Confusingly Similar

The Respondent concedes that the "first part" of the Disputed Domain Name is identical to the Trade Mark.

The Respondent submits that it waited until the general availability date to purchase the Disputed Domain Name. It thought it was fine to purchase the Disputed Domain Name because the Complainant had not done so during the sunrise period.

Rights or Legitimate Interests

The Respondent submits that it has a legitimate interest in the Disputed Domain Name. It owns over 80 domains with ".today" and ".club" gTLDs. The Disputed Domain Name is not a priority domain, but it is one that the Respondent wants to retain.

The Respondent further submits that it portrays the word as HERMES, which is an acronym for the Respondent's clothing idea, "Her Mind Equals Strength". The Respondent has a design which incorporates this acronym. The Respondent was planning on selling t-shirts, jackets, and other clothing products via CafePress and implementing the content on a website at the Disputed Domain Name.

Registered and Used in Bad Faith

The Respondent submits the following evidence that the Disputed Domain Name was not registered and has not been used in bad faith:

- The Respondent never attempted to prevent the Complainant from acquiring the Disputed Domain Name and has never contacted the Complainant to offer the Disputed Domain Name for sale or rent. Further, the Disputed Domain Name has not been listed for sale on the Respondent's websites.

- The Disputed Domain Name redirects to the Respondent's official site, as do all of the Respondent's domain names until they have content. The Respondent thought this would be more attractive than using parking pages.

- The Respondent's websites do not appear when the Trade Mark is searched and the Respondent does not use any of the Complainant's logos on the website at the Disputed Domain Name.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) he Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name, and no additional words have been added.

In cases concerning new gTLDs, a number of panels have found that a descriptive TLD suffix may further suggest an association with a trade mark, thus increasing confusion (see Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597 in relation to the gTLD ".clothing"). Here, the gTLD ".clothing" is descriptive of one category of goods provided by the Complainant under the Trade Mark. As such, this descriptive TLD suffix increases the confusion.

In light of the above, the Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- The Respondent has no connection with the Complainant, and the Complainant has not consented to the Respondent's use of the Trade Mark.

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name currently redirects to the website hosted at the Respondent's domain name, <mmga-sites.com>, at which the Respondent runs a business of selling domain names. The Disputed Domain Name is not one of the domain names listed for sale on this website, and the Respondent does not use the Trade Mark in respect of any other goods or services it currently provides.

- The Respondent is not commonly known by "HERMES" or similar.

The Respondent has not provided sufficient evidence to rebut the Complainant's prima facie case. The Respondent claims that it has a legitimate interest in the Disputed Domain Name as it was planning to sell clothing branded with "HERMES", which the Respondent claims is an acronym for "Her Mind Equals Strength".

It appears that the Respondent is relying on paragraph 4(c)(i) of the Policy, and is attempting to show that it has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. However, the Respondent has not provided any evidence of such preparation, other than an image of a t-shirt annexed to the Response which is dated after the date the Complaint was filed. In the circumstances, it is unlikely that the Respondent's use was bona fide.

In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Complainant has been operating since 1837, and has developed a luxury brand which is well-known globally. It has more than 100 registered trade marks and a number of domain names. The Disputed Domain Name was registered on February 5, 2014. In an informal email communication between the Respondent and the Complainant, dated October 8, 2014, the Respondent stated that it initially registered the Disputed Domain Name in the hope of becoming an affiliate of the Complainant. Therefore, the Panel accepts that the Respondent had knowledge of the Complainant and the Trade Mark at the time it registered the Disputed Domain Name, and proceeded to do so in direct infringement of the Trade Mark.

It is bad faith to use a domain name that incorporates another's trade mark to gain attention or leverage when trying to negotiate a business deal with the trade mark owner (see, e.g., Red Frog Events, LLC v. Maximum Adventure Pty Ltd., WIPO Case No. DAU2012-0002; Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300).

In certain circumstances, where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Name in bad faith.

The Disputed Domain Name currently redirects Internet users to the Respondent's website, at which it runs a business of selling domain names. The Disputed Domain Name is not one of those domain names currently offered for sale. However, the Panel is of the view that the Respondent is likely attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the provision of products on that website (see paragraph 4(b)(iv) of the Policy).

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

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.clothing> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: December 18, 2014

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