WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

H&M Hennes & Mauritz AB v. Saleh Bahjat

Case No. D2019-1767

1. The Parties

The Complainant is H&M Hennes & Mauritz AB, Sweden, represented by Stobbs IP Limited, United Kingdom.

The Respondent is Saleh Bahjat, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <hmfranchise.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2019, 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 July 26, 2019.

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 Respondent of the Complaint, and the proceedings commenced on July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2019.

The Center appointed Zoltán Takács as the sole panelist in this matter on August 23, 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.

The language of this administrative proceeding is English, that being the language of the registration agreement.

4. Factual Background

The Complainant is a multinational clothing-retail group that operates in more than 4,900 stores across 72 markets worldwide.

As of 2018, the Complainant employed 177,000 people.

The Complainant has a global trademark portfolio, inclusive of:

- US Trademark Registration, H&M, No. 2397326 registered on October 24, 2000 for the goods and services of classes 14, 18, 25 and 35 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (“The Nice Classification”),

- European Union Trade Mark Registration (“EUTM”), HM, No. 015671274 registered on December 21, 2016 for goods and services of classes 25 and 35, and

- International Trademark Registration (“IR”), H&M, No. 634642 registered on March 24, 1995 for goods of classes 3, 14, 18, 25 and 28.

Since November 14, 1997, the Complainant owns the domain name <hm.com>, which links to its principal website.

The disputed domain name <hmfranchise.com> was created on April 24, 2019 and has been used for sending fraudulent emails attempting to persuade people to pay large sums of money.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <hmfranchise.com> is confusingly similar to its H&M trademark. Addition of the generic word “franchise” does not alter the overall impression of the disputed domain name and the ampersand present in the trademark is not a valid character for the registration of domain names.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.

The Complainant claims that the Respondent’s registration and use of the disputed domain name in fraudulent emails as well his certain knowledge of its trademark prior to registration amounts to typical bad faith conduct.

The Complainant requests that the disputed domain name <hmfranchise.com> be transferred from the Respondent to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the 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.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.

It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.

The Complainant produced suitable evidence of having registered rights in the trademarks H&M and HM.

For the purpose of this proceeding, the Panel establishes that the US Trademark Registration No. 2397326, EUTM No. 015671274 and IR No. 634642 satisfy the requirement of having trademark rights for the purpose of the Policy.

Having determined the presence of the Complainant’s trademark rights in the HM and H&M marks, the Panel next assessed whether the disputed domain name <hmfranchise.com> is identical or confusingly similar to the trademarks.

According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

According to section 1.8 of the WIPO Overview 3.0, 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.

According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.

The disputed domain name <hmfranchise.com> consists of the Complainant’s HM trademark in its entirety, the H&M trademark without the symbol ampersand (“&”) that cannot be reflected in domain names as well as of the descriptive word “franchise”.

These alterations in view of the Panel do not avoid the finding of confusing similarity between the disputed domain name and the Complainant’s trademark; the fact of confusing similarity stems from the use of the Complainant’s H&M trademark in the disputed domain name.

The applicable generic Top-Level Domain (“gTLD”) suffix in the disputed domain name, “.com” should in relation to this administrative proceeding be disregarded.

Accordingly, the Panel finds that the disputed domain name <hmfranchise.com> is confusingly similar to the Complainant’s HM and H&M trademark and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

(ii) it has been commonly known by the domain name;

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the HM and H&M trademark.

The Complainant has never authorized the Respondent to use its trademarks in any way, and its prior rights in its trademarks long precede the date of registration of the disputed domain name.

According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.

As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.

According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.

The H&M trademark of the Complainant has a strong reputation and due to its substantial and continued global use is widely known. It’s not realistic to presume that the Respondent has decided to incorporate the Complainant’s trademark into the disputed domain name for any other reason than to target the Complainant and its H&M trademark for commercial gain.

The Respondent used the disputed domain name for the purpose of sending fraudulent emails along with forged documentation to various individuals. In these emails the Respondent used the name of one of the Complainant’s top executives, all in attempt to persuade people to pay large sums of money in order to enter into an H&M franchise agreement in Angola. This, in addition to illicit activities of the Respondent also proves that the Respondent clearly had actual knowledge of the Complainant’s business and its H&M trademark prior to registering the disputed domain name.

According to section 3.1.3 of the WIPO Overview 3.0, use of a domain name for per se illegitimate activity such as for instance phishing is a behavior that is manifestly considered evidence of bad faith.

Previous UDRP panels have found that use of the domain name to send fraudulent emails is evidence of both bad faith registration and use (see, e.g., Pfizer Inc. v. Michael Chuks / Whoisguard Protected, Whoisguard Inc. WIPO Case No. D2014-0887 and Minerva S.A. v. Miranda Nyenhuis, WIPO Case No. D2018-0763).

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 <hmfranchise.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist
Date: September 3, 2019