Hermes recuperates domain name under '.clothing' gTLD

International

In a recent case under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation (WIPO), a well-known fashion house has obtained the transfer of a domain name identically reproducing its trademark under the new generic top-level domain (gTLD) ‘.clothing’.

The complainant was Hermes International, a well-known French high-fashion house established in 1837, specialising in luxury goods, including clothing, accessories and perfumes.  The complainant owns over 100 HERMES marks throughout the world, including in the United States, in connection with luxury goods. It also owns the domain name ‘hermes.com’, which points to its official website at ‘www.hermes.com’ where it offers luxury goods for sale. It also owns a number of other domain names under various country-code top-level domains, such as ‘hermes.fr’, also pointing to its official website.

The respondent was MMGA Domains LLC a company based in Miami, Florida. The disputed domain name was ‘hermes.clothing’, which was registered by the respondent on February 5 2014. It was pointing to the respondent's website offering domain names for sale.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at Paragraph 4(a):

  1. the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;

  2. the respondent has no rights or legitimate interests in respect of the domain name; and

  3. the domain name has been registered and is being used in bad faith.

With regard to the first test, the panel found that the complainant had established that the domain name was confusingly similar to a trademark in which the complainant has rights. In this regard, the panel noted that the domain name wholly incorporated the complainant's trademark, without any additional terms. Furthermore, although generally the TLD is disregarded when assessing identity or confusing similarity, the panel found that, in this particular case, the TLD ‘.clothing’ further increased the confusion with the complainant as it was descriptive of one category of goods for which the complainant's trademarks had been registered.

The panel thus found that the complainant satisfied the first requirement of the UDRP, in accordance with Paragraph 4(a)(i).

Turning to the second requirement under the UDRP, a complainant must establish prima facie that a respondent does not have rights or legitimate interests in the disputed domain name. In this regard, Paragraph 4(c) of the UDRP sets out the following non-exhaustive list of circumstances which may indicate that a respondent has rights or legitimate interests in a domain name:

  1. before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name was in connection with a good-faith offering of goods or services;

  2. the respondent has been commonly known by the domain name, even if it has acquired no trademark rights; or

  3. the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.

In the case at hand, the complainant argued that the respondent was not known by the complainant's trademark. Neither did it have any connection with the complainant and nor was it authorised by the complainant to use its trademark. The panel therefore found that the complainant had established a prima facie showing that the respondent did not have rights or legitimate interests in the domain name. 

The panel then went on to examine whether the respondent had been able to rebut the complainant's prima facie showing. The respondent originally argued in its informal response that it had registered the domain name in the hope of entering into an affiliate agreement with the complainant. In its formal response, however, the respondent attempted to argue that it had made demonstrable preparations to use the domain name in connection with a good-faith offering of goods or services, in accordance with Paragraph 4(c)(i) of the UDRP. In particular, the respondent argued that it was planning on using the domain name to point to a website offering for sale items of clothing under the acronym HERMES, which the respondent claimed stood for "Her Mind Equals Strength". The respondent submitted a design incorporating the acronym.

The panel, however, found that the respondent had failed to provide sufficient evidence to support its claim and rebut the complainant's prima facie showing. In particular, the respondent had not provided any evidence of demonstrable preparations to use the domain name in connection with a good-faith offering of good and services in accordance with Paragraph 4(c)(i) - the only evidence supplied was an image of a t-shirt, dated after the date that the complaint was filed. Thus, the panel found that the respondent's use of the domain name was likely not in good faith.

The panel therefore found that the complainant satisfied the second requirement of the UDRP, in accordance with Paragraph 4(a)(ii).

Turning to the third requirement, a complainant must demonstrate that the respondent both registered and used the disputed domain name in bad faith. In this regard, Paragraph 4(b) of the UDRP sets out the following list of non-exhaustive circumstances that may be invoked by a complainant to illustrate the respondent's bad faith:

  1. the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring it to the complainant or to a competitor, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

  2. the respondent registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

  3. the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

  4. the respondent is intentionally using the domain name in an attempt to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website.

Regarding registration in bad faith, the panel found that the respondent had knowledge of the complainant and its rights at the time of registration of the domain name, particularly given the complainant's global renown and the fact that the respondent had expressed its desire to become the complainant's affiliate. In addition, the panel found that the respondent likely registered the domain name seeking to profit from the complainant's reputation. Thus, the panel found that the domain name was registered in bad faith.

As far as bad-faith use was concerned, the panel found that the respondent's use of the domain name was likely an attempt to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the complainant's trademark, in accordance with Paragraph 4(b)(iv) of the UDRP. Thus, the panel found that the domain name was used in bad faith.

The panel therefore found that the complainant satisfied the third requirement of the UDRP, in accordance with Paragraph 4(a)(iii), and as a result ordered the transfer of the domain name to the complainant.

This decision illustrates the potential impact that the introduction of almost 1,400 new gTLDs will have for brand owners across the globe. Trademark holders are well advised to seek assistance to define a suitable strategy to protect their brands from cybersquatters under the new gTLDs, particularly those that are descriptive of, or closely-related to, their brands. The decision also confirms that, whilst there are other rights protection mechanisms, such as the Uniform Rapid Suspension System (URS), that have been put in place specifically to assist brand owners to protect their online brands under new gTLDs, the UDRP has often proven to be a more appropriate mechanism, particularly for trademark owners seeking to obtain the transfer of a domain name (as opposed to its suspension, which is the only remedy available under the URS).

David Taylor and Soraya Camayd, Hogan Lovells LLP, Paris

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