The Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Hubert Lloyd Alan of London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <hugobossorangeshop.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 26, 2017. On January 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 24, 2017.
The Center appointed Alejandro Touriño as the sole panelist in this matter on February 28, 2017. 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 Complainants are part of the HUGO BOSS Group, which was founded in 1924, and is one of the market leaders in the manufacturing and marketing of premium fashion and accessories for men and women.
The Complainants own a vast number of trademarks HUGO BOSS, BOSS and BOSS ORANGE all around the world in classes 3, 9, 14, 18, 25 of the Nice Classification. See e.g., International Trademark registration number 637658 HUGO BOSS, registered on May 31 1995.
The Complainants own numerous domain names incorporating their trademarks, including, among others, <hugo.com> and <hugoboss.com>.
The Complainants' trademark HUGO BOSS has been considered internationally well known in prior UDRP cases.
The disputed domain name <hugobossorangeshop.com> was registered on January 5, 2017. The disputed domain name resolves to a website which purports to offer HUGO BOSS-branded goods for sale.
The Complainants contend to be one of the market leaders in the premium and luxury segment of the global apparel market. The Complainants are also owners of several trademarks including the terms HUGO, HUGO BOSS and BOSS ORANGE. The Complainants state that the collections of "Hugo Boss", "Boss Orange" and "Hugo" cover a comprehensive product range encompassing goods not limited to clothing.
The disputed domain name is identical to the Complainants trademarks HUGO, HUGO BOSS and BOSS ORANGE as it wholly incorporates them. Furthermore, the addition of the descriptive term "shop" does not influence the comparison of the conflicting signs. Also, the addition of the generic Top-Level Domain ("gTLD") ".com" is irrelevant in the determination of the confusing similarity between the signs.
The Complainants assert that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Complainants have not licensed or otherwise authorized the Respondent to use their trademarks or to apply for any domain name incorporating their trademarks.
The Complainants assert that the disputed domain name was registered and is being used in bad faith.
There are no circumstances under which the Respondent could legitimately register and use the disputed domain name. Indeed, the Complainants' trademarks are well known and that the Respondent must have had knowledge of the Complainants' rights when it registered the disputed domain name.
The website under the disputed domain name leads to a shop of clothing articles under the name "Hugo Boss", which was not allowed by the Complainants, where the Respondent imitates the Complainants' trademarks and design.
The disputed domain name has been registered to create confusion and mislead Internet users into believing that the Complainants and the Respondent are affiliated or endorse the website to which the disputed domain name resolves, in an attempt to wrongly lead the consumers and attract for commercial gain Internet users who could think it is a website managed by the Complainants.
The Respondent did not reply to the Complainants' contentions.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainants must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, 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 or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
In light of their common legal interest in the HUGO BOSS trademark and its use, the Panel is satisfied that it is appropriate for the Complainants to act as joint Complainants in these proceedings.
The Complainants have provided evidence of ownership of trademark registrations for HUGO, HUGO BOSS and BOSS ORANGE.
It is well established in previous UDRP cases that, where a domain name incorporates the complainant's registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525). It should be noted that the distinctive parts of the disputed domain name ("hugo boss" and "orange") are identical to the Complainants' trademarks HUGO, HUGO BOSS and BOSS ORANGE.
Furthermore, the addition of the descriptive term "shop" does not dispell the confusing similarity, since it only makes reference to the business activity of the Complainants. Indeed, the addition of merely descriptive terms such as "shop" would normally be insufficient in itself to avoid a finding of confusing similarity under paragraph 4(a)(i) of the Policy (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚ WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
In addition, the inclusion of the gTLD ".com" is typically irrelevant in the determination of confusing similarity between the trademark and the disputed domain name.
In view of all this, the Panel finds that the Complainants have proven that the disputed domain name is identical or confusingly similar to the trademarks HUGO, HUGO BOSS and BOSS ORANGE in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) before any notice to the Respondent of the dispute, the use by the Respondent 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
It is commonly accepted that, under the Policy, the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent's rights or legitimate interests in respect of a domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants may be deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In the case at issue, by not submitting a Response, the Respondent has not rebutted the Complainants' prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. If the Respondent had any such rights or interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint (see 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design, WIPO Case No. D2006-0977).
In addition, there is no evidence showing that the Respondent has any rights or legitimate interests in the disputed domain name. Indeed, in view of the Complainants' well-known trademark HUGO BOSS, the Respondent must in all likelihood have known, when registering the disputed domain name, that the Respondent could not have claimed any such rights or legitmate interests.
Furthermore, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the disputed domain name resolves to a website which misleadingly purports to be a genuine website of the Complainants.
In addition, there is no indication before the Panel, that the Respondent has been authorized or licensed by the Complainants to use the Complainants' trademarks HUGO, HUGO BOSS and BOSS ORANGE in the disputed domain name. Indeed, the adoption by the Respondent of a domain name containing in full the Complainants' trademarks inevitably leads to the diversion of the Complainants' potential consumers to the Respondent's website.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 the holder's website or location or of a product or service on the holder's website or location.
In accordance with prior UDRP decisions, the Panel finds that failure to respond the Complaint can be evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the Panel stated: "any such bad faith is compounded when the domain name owner, upon receipt of notice that the disputed domain name is identical or confusingly similar to a registered trade mark, refuses to respond."
In addition, the Complainants' trademark HUGO BOSS has been considered well known in prior UDRP cases (see Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin / Personal, Loung Dinh Dung, WIPO Case No. D2011-0564). Hence, the Panel finds it is also unlikely that the Respondent would not have been aware of the Complainants' well-known trademark when registering the disputed domain name. This can be found as evidence of the registration of the disputed domain name in bad faith.
Based on the evidence provided by the Complainants, the Panel finds that the Respondent, by registering and using the disputed domain name incorporating the Complainants' well-known trademark HUGO BOSS along with term "orange", which is also part of the Complainants' trademark BOSS ORANGE, and the term "shop", which is a descriptive term related to the Complainants' business activity, tried to mislead Internet users and consumers, for commercial gain, into thinking that the website at the disputed domain name is, in some way or another, connected to, sponsored by or affiliated with the Complainants and their business, which the Panel finds is evidence of bad faith. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes the entire trademarks of the Complainants is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005 0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <hugobossorangeshop.com> be transferred to the Complainants.
Alejandro Touriño
Sole Panelist
Date: March 19, 2017