WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

H & M Hennes & Mauritz AB v. Privacy Guardian, See PrivacyGuardian.org; Joyce Cheadle; Gilberto Andino; Xue Lin

Case No. D2019-0454

1. The Parties

The Complainant is H & M Hennes & Mauritz AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.

The Respondents are Privacy Guardian, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“USA”); Joyce Cheadle of Lanzhou, Gansu, China; Gilberto Andino of Huron, South Dakota, USA; Xue Lin of Wuhan, Hubei, China.

2. The Domain Names and Registrars

The disputed domain name <handmvip.club> is registered with GoDaddy.com, LLC; the disputed domain name <hmfashion.top> is registered with NameSilo, LLC; the disputed domain names <hmohopuk.com>, <hmshopen.com>, <hmvshopen.com>, and <hmvshopuk.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrars”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2019 regarding the disputed domain names <hmfashion.top>, <hmshopen.com>, <hmvshopen.com>, <hmvshopuk.com>, and <handmvip.club>. On February 27, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 27, 2019 and February 28, 2019, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On March 1, 2019, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on March 4, 2019. The Respondents did not comment on the language of the proceeding by the specified due date.

On March 11, 2019, the Complainant filed the amended Complaint, adding the disputed domain name <hmohopuk.com>. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <hmohopuk.com>. On March 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. The Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondents did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amended 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 the Respondents in English and Chinese of the Complaint, and the proceedings commenced on March 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 9, 2019.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on April 25, 2019. 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

In its Complaint, the Complainant adduces several Chinese trademarks (device marks) protecting the sign H&M, e.g., Chinese trademark registration number 5541606, registered on August 28, 2009 and Chinese trademark registration 5541599, registered on April 7, 2010. The Complainant also owns a portfolio of domain names, including the domain name <hm.com>, registered on November 13, 1997.

The Respondents registered the disputed domain name <handmvip.club> on January 5, 2019; <hmfashion.top> on December 4, 2018; <hmohopuk.com> on December 29, 2018; <hmshopen.com> on November 13, 2018; <hmvshopen.com> on November 27, 2018; and <hmvshopuk.com> on December 25, 2018. Upon the Panel’s review, on the date of submission of the Complaint, the disputed domain names were all linked to the same active website, which offers H&M branded clothing for sale. The websites remain unchanged on the date of this Decision.

5. Parties’ Contentions

A. Complainant

The Complainant is a global company active in the fashion sector, with a total of 4,800 brick-and-mortar stores and 47 H&M online stores. The Complainant claims to enjoy a worldwide reputation as one of the leading fashion companies. The Complainant essentially contends that the disputed domain names are identical or confusingly similar to its trademarks for H&M, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 First Preliminary Issue: Consolidation of Respondents

The Complainant requests consolidation in regard to the Respondents, as the disputed domain names are currently owned by multiple persons. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.2: “where a complaint is filed against multiple Respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements: the fact that the websites to which each of the disputed domain names resolve are identical; the fact that the disputed domain names were all registered within a two month period around the end of the year 2018; the fact that each of the disputed domain names consists of the Complainant’s trademark in combination with a descriptive term, thereby exposing a pattern; and the fact that all disputed domain names target the same trademarks of the Complainant. The Panel notes that the Respondents did not submit any arguments and did not contest the request for consolidation.

In view of these elements, the Panel rules that the websites linked to the disputed domain names are under common control, that in this case consolidation would be fair and equitable to all parties involved and would safeguard procedural efficiency. The Panel also notes that the fact that the disputed domain names were created by different registrars does not alter this finding, as it does not exclude common control (see also Mou Limited v. Whois Agent, Domain Whois Privacy Protection Service, Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Luo Yuandong, Laoyuandong, Song Li Hong, Sun YanQi, WIPO Case No. D2018-1891).

6.2 Second Preliminary Issue: Language of proceedings

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant states that, to the best of its knowledge, the language of the Registration Agreements is Chinese. The Complainant filed both its Complaint and its amended Complaint in English, each time including a motivated request that the language of proceedings be English. The Respondents did not make any comments on the language of the procedure and did not submit any arguments on the merits.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the fact that the Respondents did not comment on the language of the procedure and did not submit arguments on the merits (while they had the right to do so in Chinese or English); the fact that the text on the websites linked to the disputed domain names is exclusively English, from which the Panel deducts that the Respondents understand, and are able to communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.

6.3 Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel's findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the sign H&M based on its registration and use of the same as a trademark, incidentally commencing prior to the registration of the disputed domain names.

Moreover, as to identity or confusing similarity, the Complainant’s trademark H&M must be seen, for the purposes of the domain name system, as protecting both the signs “hm” and “handm”, since the ampersand symbol cannot be used in the domain name system. Each of the disputed domain names consists of the Complainant’s H&M trademark in full (be it as “hm” or “handm”), followed, for each of the disputed domain names, by either “vip”, “fashion”, “vshop”, “uk”, “en”, and “ohop”, which are merely descriptive components (“uk” generally refers to the United Kingdom, “en” generally refers to the English language version of a website and “vshop”and “ohop” likely constitute an intentional misspelling of the word “shop”). According to the WIPO Overview 3.0, section 1.7, “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 will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The Panel concludes that each of the disputed domain names contains the entirety of the Complainant’s trademark, as its sole distinctive and dominant feature. The addition of the descriptive components does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant’s trademarks, and the first element required by the Policy is fulfilled.

B. Rights or Legitimate Interests

The Complainant has demonstrated that the Respondents have no rights or legitimate interests in the disputed domain names. The Panel notes that the Respondents are not licensees or authorized resellers, service providers or distributors, and are not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Panel also notes that no evidence or arguments have been submitted by the Respondents in reply.

The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The registration of the disputed domain names, which incorporates the Complainant’s trademarks in their entirety, as their only distinctive feature, is clearly intended to profit from, or exploit the Complainant’s trademarks and mislead and divert consumers to the disputed domain names. Even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondents that the Complainant owned, and owns, trademarks in H&M and uses these marks actively. At the date of the registration of the disputed domain names, the Complainant’s trademarks were already registered for about a decade, and were well-known, and the Respondents therefore knew (or should have known) about the existence of these trademarks. In the Panel’s view, this clearly establishes the bad faith of the Respondents, and the Panel therefore rules that it has been demonstrated that the Respondents registered the disputed domain names in bad faith.

As to use of the disputed domain names in bad faith, the Complainant provides evidence that the websites linked to the disputed domain names are used to actively sell unauthorized and purported H&M branded clothing. Upon the Panel’s review, the websites linked to the disputed domain names moreover explicitly purport to be the Complainant’s official websites, by displaying the words “H&M Official Website” in the browser tab title. Finally, the Respondents also chose not to respond to the Complainant’s cease-and-desist letters requesting to take those websites offline. On the basis of these elements, the Panel rules that it has been demonstrated that the Respondents have used, and are using the disputed domain names in bad faith.

Finally, the Respondents have failed to provide any response or evidence to establish their good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 names, <handmvip.club>, <hmfashion.top>, <hmohopuk.com>, <hmshopen.com>, <hmvshopen.com>, and <hmvshopuk.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: May 2, 2019