WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hugo Boss AG v. Guan Jing, Lin Jing, li xiaoyong

Case No. D2012-1690

1. The Parties

Complainant is Hugo Boss AG of Mezingen, Germany, represented by Olswang LLP, United Kingdom of Great Britain and Northern Ireland.

Respondent is (1) Guan Jing of He Zhang, China; (2) Guan Jing of Putian, China; (3) Lin Jing of Putian, Fujian China, and (4) li xiaoyong of shenzheng, China.

2. The Domain Names and Registrars

The disputed domain names <cheaphugoboss.com> and <hugobossoutlet.org> are registered with Chengdu West Dimension Digital Technology Co., Ltd.

The disputed domain name <hugo-boss-outlet.org> is registered with Internet.bs Corp.

The disputed domain names <cheaphugoboss.net>, <cheaphugoboss.org>, <hugobossoutletonline.com>, <hugobossoutletonline.net>, <hugobossoutletonline.org>, <hugoboss-store.org>, <hugoboss-store.net> and <hugo-boss-outlet.net> are registered with Key-Systems GmbH dba domaindiscount24.com. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2012. On August 24, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names <cheaphugoboss.com>, <hugo-boss-outlet.org> and <hugoboss-store.net>. On August 24 and 27, 2012, the Registrars transmitted by email to the Center their verification responses confirming that Respondent Guan Jing is listed as the registrant of the disputed domain names and providing the contact details.

On August 24, 2012, Complainant sent an email communication to the Center requesting that the domain name <hugobossoutlet.org> be added to the proceedings. On September 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <hugobossoutlet.org>. On September 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent Guan Jing is listed as the registrant of the disputed domain name <hugobossoutlet.org> and providing the contact details.

On September 7, 2012, Complainant sent an email communication to the Center requesting that the domain names <hugo-boss-outlet.net> and <hugoboss-store.org> be added to the proceedings. On September 10, 2012, the transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <hugo-boss-outlet.net> and <hugoboss-store.org>. On September 14, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent lixiaoyong is listed as the registrant of the disputed domain names <hugo-boss-outlet.net> and <hugoboss-store.org> and providing the contact details.

On September 19, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On September 19, 2012, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on October 2, 2012.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2012. Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on October 24, 2012.

On October 16, 2012, Complainant submitted by email a request that an additional domain name <hugobossoutletonline.org> be added to the proceeding.

On October 22, 2012, Complainant submitted by email a second request that four additional domain names be added to the proceeding, namely, <hugobossoutletonline.net>, <hugobossoutletonline.com>, <cheaphugoboss.net> and <cheaphugoboss.org>.

On October 24, 2012, an email communication was received from Respondent.

The Center appointed Yijun Tian as the sole panelist in this matter on November 8, 2012. 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.

Following review of the case file, the Panel issued an Administrative Panel Procedural Order No. 1 on December 17, 2012 allowing Complainant to submit an amended Complaint with regards to the five additional domain names <hugobossoutletonline.org>, <hugobossoutletonline.net>, <hugobossoutletonline.com>, <cheaphugoboss.net>, and <cheaphugoboss.org>, and requesting the Center to notify Respondent of the amended Complaint.

Complainant submitted an amended Complaint on December 21, 2012. On December 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On December 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent Guan Jing is listed as the registrant of the disputed domain names <hugobossoutletonline.org>, <hugobossoutletonline.net>, <cheaphugoboss.net>, and <cheaphugoboss.org>, and Respondent Lin Jing is listed as the registrant of the disputed domain name <hugobossoutletonline.com> and providing the contact details.

On December 28, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On January 2, 2013, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that 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 Administrative Panel Procedural Order No. 1, the Center formally notified Respondent of the amended Complaint. The due date for the Respondent to respond was January 23, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 24, 2013.

4. Factual Background

Complainant, Hugo Boss AG, is a company incorporated in Mezingen, Germany. Complainant and its related group companies (together “Hugo Boss”) is a successful, international fashion group of companies in the high-end, luxury fashion retail market. It operates in the United Kingdom and internationally for numerous years. Its products are sold in 124 countries and at more than 6,100 points of sale.

Complainant owns numerous trademark registrations for the word mark HUGO BOSS around the world, including China (since 1985; see Annex 7 to the Complaint). It also owns numerous domain names which incorporate the registered trademarks either alone or together with descriptive words, such as <hugoboss.com> (since April 24, 1997) and <hugobossstore.com> (since December 8, 2006) (see Annex 8 to the Complaint).

Respondents are (1) Guan Jing of He Zhang, China, who registered the disputed domain names <hugoboss-store.net> on June 12, 2012, <hugo-boss-outlet.org> on May 23, 2012, <hugobossoutletonline.org> and <hugobossoutletonline.net> on August 26 2012, <cheaphugoboss.net> on August 27, 2012, and <cheaphugoboss.org> on August 19, 2012; (2) Guan Jing of Putian, China, who registered the disputed domain name <cheaphugoboss.com> on February 28, 2012 and <hugobossoutlet.org> on January 28, 2012; (3) Lin Jing of Putian, Fujian China who registered the disputed domain name <hugobossoutletonline.com> on August 11, 2012; and (4) li xiaoyong of shenzheng, China, who registered the disputed domain names <hugo-boss-outlet.net> and <hugoboss-store.org> both on September 1, 2012. All the disputed domain names are registered long after Complainant’s HUGO BOSS marks became internationally well known.

5. Parties’ Contentions

A. Complainant

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

Complainant and its related group companies (together “Hugo Boss”) is a successful, international fashion group of companies in the high-end, luxury fashion retail market.

It designs, manufactures, distributes and sells luxury, designer items of clothing, shoes, cosmetics, perfume, eyewear and other accessories under the brand names BOSS, HUGO BOSS, BOSS HUGO BOSS and/or HUGO HUGO BOSS. Its products are sold all over the world, in 124 countries and at more than 6,100 points of sale. As at the end of 2010, there were 537 directly operated stores (including outlets).

Complainant owns numerous trademark registrations for the word mark HUGO BOSS around the world, including China (since 1985; see Annex 7 to the Complaint). Complainant has accrued significant goodwill and reputation in its HUGO BOSS marks.

It is inconceivable Respondent was not aware of Complainant or its HUGO BOSS mark at the dates of registration of the disputed domain names, and this is supported by the infringing nature of the websites at the disputed domain names.

Complainant’s domain names all pre-date the registration of the disputed domain names. They include the descriptive words “store” and “outlet” together with the brand name HUGO BOSS. This format has been copied by Respondent to register virtually identical domain names.

Each of the disputed domain names consists of the sign “Hugo Boss” in its entirety in conjunction with a wholly descriptive component.

The use of the generic terms “cheap”, “outlet”, “online” and “store” are entirely descriptive and therefore not relevant for the purposes of comparison. They do not distinguish the disputed domain names from Complainant’s trademark.

The use of hyphens in the disputed domain names serve as word separators and Complainant contends that they do nothing to distinguish the disputed domain names from Complainant’s HUGO BOSS mark.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain names;

Respondent is not known to Complainant and has not been authorised to use, register or apply to register the HUGO BOSS mark (whether as a domain name or otherwise).

Complainant’s rights (both registered and unregistered) have grown over many years and consumers will understand and recognize the mark HUGO BOSS as denoting only Complainant (or parties authorised by Complainant).

Respondent will not be able to demonstrate any legitimate interest in the disputed domain names. Respondent has no public reputation or association with the disputed domain names and has not become commonly known by the disputed domain names.

Respondent has not, since securing registration of the disputed domain names made any legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

The disputed domain names are being used to provide the exact services protected by Complainant’s HUGO BOSS trademarks (namely, a website advertising and offering for sale alleged “HUGO BOSS” branded goods).

Respondent is using the confusingly similar disputed domain names to advertise and offer for sale alleged “HUGO BOSS” branded goods to compete with Complainant. Such distortion does not represent a bona fide offering of goods and services pursuant to the Policy.

Respondent’s use of the disputed domain name is an intentional infringement and trades on the fame of the HUGO BOSS mark and Complainant’s domain names and therefore the disputed domain names have not been used, and are not being currently used, in connection with a bona fide offering of goods or services.

(c) The disputed domain names were registered and are being used in bad faith.

Complainant is globally famous and has had its registered HUGO BOSS trademarks for over 15 years. It is inconceivable that Respondent was not aware of Complainant or its activities when the disputed domain names were registered.

Respondent appears to have systematically registered a collection of domain names that are virtually identical, or confusingly similar, to Complainant’s HUGO BOSS trademarks.

There has never been any relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the disputed domain names.

The disputed domain names display websites which are of very similar construction and which appear to offer Complainant’s products for sale. (See Annexes 3 and 16 to the Complaint)

The goods offered by Respondent’s websites may not be genuine HUGO BOSS branded goods, and, this may cause irreparable damage to Complainant’s HUGO BOSS brand, goodwill and reputation.

Respondent is intended to mislead consumers into mistakenly believing that the disputed domain names (or any of them) are offered by or with the consent of Complainant.

Respondent is exploiting the goodwill and fame of Complainant’s trademark in bad faith in order to improperly benefit Respondent financially and that these activities demonstrate bad faith registration and use of the disputed domain names.

B. Respondent

Respondent did not formally reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name <hugo-boss-outlet.org> is English. The language of the registration agreements for the disputed domain names <hugoboss-store.net>, <hugobossoutletonline.org>, <hugobossoutletonline.net>, <cheaphugoboss.net>, <cheaphugoboss.org>, <cheaphugoboss.com>, <hugobossoutlet.org>, <hugobossoutletonline.com>, <hugo-boss-outlet.net> and <hugoboss-store.org> are all Chinese.

Pursuant to paragraph 11 of the Rules, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:

(a) the disputed domain names consist of the brand HUGO BOSS together with descriptive English words “outlet”, “store”, “cheap” and “online”;

(b) the websites at the disputed domain names are in the English language;

(c) the “Privacy Notice” pages at each of the disputed domain names refer to English legislation (“We will only use the information that we collect about you lawfully (in accordance with the Data Protection Act 1998)”) which misleadingly suggests to consumers that the operator of this website is based in England or is governed by English law;

(d) each website at each disputed domain name offers prices in US Dollar, Australian Dollar, Canadian Dollar and Great Britain Pound (all of which are English speaking territories) together with Euro; and

(e) the only communication received from Respondent is in English.

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hu’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Germany, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain names include Latin characters “hugo” and English words “boss”, “cheap”, “online”, “store” and “outlet” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names are all registered in Latin characters and particularly in English language, rather than in Chinese script; (b) the websites at the disputed domain names (except two inactive ones) are English-based websites and Respondent is apparently doing business in English through its websites (Annex 3 to the Complaint); (c) the websites appear to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the only communication received from Respondent is in English; (e) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Multiple Respondents and Consolidation

The Panel is further satisfied that, in the circumstances of the present dispute, the case is one that is suitable for consolidation and resolution in a single UDRP proceeding. See further the discussion of applicable principles and jurisprudence in paragraph 4.16 of the WIPO Overview 2.0.

The Complainant has indicated a commonality of control, demonstrating via the use of identical contact emails a commonality between “Guan Jing” of He Zhang and Putian, China, and evidence of common control through the redirection of the disputed domain names registered by “Lin Jing” and “li xiaoyong” to websites at the disputed domain names registered by “Guan Jing”.

Accordingly, the Panel accepts Complainant’s contentions that all websites at the disputed domain names are operated by the same person or entity. The Panel is convinced the disputed domain names are subject to common control and the consolidation would be fair and equitable to all parties. Consequently, the Panel will address the four Respondents as “Respondent” for purposes of the discussion below.

6.3. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by the respondent 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the HUGO BOSS marks acquired through registration. The HUGO BOSS marks have been registered worldwide including in China, and Complainant has a widespread reputation as a successful, international fashion group of companies in the high-end, luxury fashion retail market.

The disputed domain names <hugo-boss-outlet.org>, <hugoboss-store.net>, <hugobossoutletonline.org>, <hugobossoutletonline.net>, <cheaphugoboss.net>, <cheaphugoboss.org>, <cheaphugoboss.com>, <hugobossoutlet.org>, <hugobossoutletonline.com>, <hugo-boss-outlet.net> and <hugoboss-store.org> all comprises the HUGO BOSS mark in its entirety. The disputed domain names only differ from Complainant’s HUGO BOSS mark by the addition (in all cases) of one or more of the words “cheap”, “outlet”, “store”, “online” and/or “-” (hyphen) to the mark HUGO BOSS. This does not seem to eliminate the identity or confusing similarity between Complainant’s HUGO BOSS mark and the disputed domain names.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. HK0500065).

The mere addition of the descriptive terms of “cheap”, “outlet”, “store”, “online” and/or “-” (hyphen) as prefixes and/or suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain names from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. One of common meanings of the term “outlet” is a store that sells the goods of a particular manufacturer or wholesaler. Internet users who visit the disputed domain names are likely to be confused and may falsely believe that they are online shops operated by Complainant for selling HUGO BOSS branded products. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the HUGO BOSS marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:

(i) Respondent’s use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain names; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the HUGO BOSS marks globally, including registration in China since 1985 (see Annex 7 to the Complaint) which long precedes Respondent’s registration of the disputed domain names (in 2012). Complainant also owns numerous domain names which incorporate the registered HUGO BOSS trademarks either alone or together with descriptive words, such as <hugoboss.com> (since April 24, 1997) and <hugobossstore.com> (since December 8, 2006)(see Annex 8 to the Complaint). According to Complainant, Complainant is a world leading fashion group of companies in the high-end, luxury fashion retail market. Its products are sold all over the world, in 124 countries and at more than 6,100 points of sale. As at the end of 2010, there were 537 directly operated stores (including outlets).

Moreover, Respondent is not an authorized dealer of HUGO BOSS branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “Hugo Boss” in its business operation or the use of the HUGO BOSS Marks and design on its websites (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the HUGO BOSS marks or to apply for or use any domain names incorporating the HUGO BOSS marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered all the disputed domain names in 2012, long after the registration of the first HUGO BOSS Marks. The disputed domain names are identical or confusingly similar to Complainant’s HUGO BOSS marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported HUGO BOSS products at the disputed domain names (except two inactive ones) (Annex 3 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s websites 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 respondent’s websites or location or of a product or service on the respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain names in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the HUGO BOSS mark with regard to its products. Complainant has registered its HUGO BOSS marks internationally, including registration in China (since 1985). Moreover, the websites to which the disputed domain names resolve (“the Websites”) (except two inactive ones) advertise for sale various purported HUGO BOSS products (Annex 3 to the Complaint).

Respondent would likely not have advertised products purporting to be HUGO BOSS products on the Websites if it was unaware of Complainant’s reputation. In other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain names. The Panel therefore finds that the HUGO BOSS mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s HUGO BOSS branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using the confusingly similar disputed domain names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainant’s HUGO BOSS branded products and services without authorization.

To establish an “intention for commercial gain” for the purpose of the Policy, evidence is required to indicate that it is “more likely than not” that the intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the HUGO BOSS marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Websites (see Annexes 3 and 16 of the Complaint). In other words, Respondent has through the use of confusingly similar domain names and webpage contents created a likelihood of confusion with the HUGO BOSS marks. Noting also that apparently no clarification as to Respondent’s relationship with Complainant is made on the homepages of the disputed domain names, Internet users are led to believe that the Websites are either Complainant’s sites or the sites of official authorized agents of Complainant, which they are not. Under the circumstances, the Panel also accepts that the two disputed domain names which currently fail to resolve to an active webpage were registered and are used in bad faith. (WIPO Overview 2.0, paragraph 3.2). Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain names are being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain names which are confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conducts of Respondent as far as the Websites are indicative of registration and use of the disputed domain names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 at <hugo-boss-outlet.org>, <hugoboss-store.net>, <hugobossoutletonline.org>, <hugobossoutletonline.net>, <cheaphugoboss.net>, <cheaphugoboss.org>, <cheaphugoboss.com>, <hugobossoutlet.org>, <hugobossoutletonline.com>, <hugo-boss-outlet.net> and <hugoboss-store.org> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: February 12, 2013