The Complainants are Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG (individually and collectively, “the Complaint”) of Metzingen, Federal Republic of Germany (“Germany”), represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Ren Shi Hua of Xiamen, Fujian, People’s Republic of China (“China”).
The disputed domain name <hugobossuksale.com> is registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2015. On February 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 17, 2015. 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 Complainant is one of the market leaders in the premium and luxury segment of the global apparel market. The Complainant was founded in 1924, it has more than 12,500 employees and its net sale were EUR 2.4 billion in 2013.
The Complainant is the owner of numerous trademark registrations for the HUGO BOSS mark around the world. For example: China registration No. 253481 HUGO BOSS of June 30, 1986; European Union Trademark No. 49254 of March 26, 2008; United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) Trademark No. 1,276,175 of August 26, 1986; United States Trademark No. 1,499,728 of August 9, 1988 and many more.
Through extensive use around the world, the HUGO BOSS trademark has generated vast good will and has become well known in connection with clothes, jewelry, watches, leather goods, perfumes and more.
The Complainant has also developed a presence on the Internet and is the owner of several domain names which contain the name “Hugo Boss”. For example: <hugoboss.com> and <hugoboss.uk>.
The disputed domain name <huhobossuksale.com> was registered on October 30, 2014.
The disputed domain name resolves to a website offering HUGO BOSS goods for sale and contains the logo trademark of the Complainant and the name “Hugo Boss”.
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s HUGO BOSS trademark and name. The Complainant further contends that the addition of the terms “sale” and “uk” does not avoid a finding of confusing similarity.
The Complainant further argues that the HUGO BOSS trademark has generated vast good will through the Complainant’s extensive use around the world and has become a well-known trademark.
The Complainant further argues that the public associates the mark HUGO BOSS exclusively with the high quality goods of the Complainant.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its HUGO BOSS trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant argues that the disputed domain name was improperly registered and is being improperly used. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website operated under the disputed domain name is an official HUGO BOSS website.
The Complainant further argues that the Respondent does not at any point identify himself as being independent from the Complainant. The Respondent has not only used the HUGO BOSS mark under the disputed domain name, but also operates an online shop which utilises the HUGO BOSS mark throughout, displays the HUGO BOSS logo on the home page, in the “title bar” of the website and offers for sale goods that are similar to those sold by HUGO BOSS which is a blatant infringement of the HUGO BOSS mark.
The Complainant further contends that the Respondent is creating the impression that the website displayed at the disputed domain name is an official HUGO BOSS website and that the Respondent is an authorised seller of HUGO BOSS products.
The Complainant further claims that the disputed domain name is a blatant infringement of the HUGO BOSS mark and no bona fide use is being made under the disputed domain name. The Complainant argues that this is clear evidence that the Respondent is trying to pass itself off as HUGO BOSS and is exploiting the goodwill associated with the HUGO BOSS mark in order to obtain commercial gain.
The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s famous and well-known trademark when registering the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of English characters, rather than Chinese characters;
b) The disputed domain name includes the English words “sale” and “uk”;
c) According to the evidence provided by the Complainant, the website under the disputed domain name resolves to an online marketplace, which is operated in English;
d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of numerous trademark registrations for the HUGO BOSS mark around the world. For example: China registration No. 253481 HUGO BOSS of June 30, 1986; European Union Trademark No. 49254 of March 26, 2008; United Kingdom Trademark No. 1,276,175 of August 26, 1986; United States Trademark No. 1,499,728 of August 9, 1988 and many more.
Also, the Complainant’s rights in the HUGO BOSS mark have been established in numerous UDRP decisions (see e.g., Hugo Boss v. Loung Dinh Dung, WIPO Case No. D2011-0564 and Hugo Boss AG v. Guan Jing, Lin Jing, li xiaoyong, WIPO Case No. D2012-1690 and many more).
The disputed domain name differs from the registered HUGO BOSS trademark by the additional words “sale” and “uk” and the additional generic Top-Level Domain (“gTLD”) “.com”.
The disputed domain name integrates the Complainant’s HUGO BOSS trademark in its entirety, as a dominant element.
The additional words “sale” and “uk” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as they are common terms in the Complainant’s field of business. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from a trademark: “The only difference between the disputed domain name and the BOSS mark is the addition of the generic words ‘onlinesale’. It is a well-established principle that generic or descriptive terms or phrases are not sufficient to remove the confusion between a domain name in dispute and a trade mark. The BOSS mark is clearly identifiable within the disputed domain name and anyone looking at the disputed domain name would expect that it probably resolves to a website where Internet users can find information pertaining to and/or purchase apparel or other goods of the Complainants. The phrase ‘onlinesale’ in this instance therefore adds to the confusion with the Complainants’ BOSS marks.” (see Hugo Boss AG, Hugo Boss Trade Mark Management GmbH & Co. KG v. Dzananovic Enis, WIPO Case No. D2014-2216).
Furthermore, the addition of a geographical name or indicator to a trademark, and in particular to the HUGO BOSS trademark, does not serve to differentiate a domain name from the trademark: “The geographical name ‘China’ does not assist in distinguishing the disputed domain name from the Complainant’s mark. The fact that crystal beads are being manufactured by the Complainant for jewelry such as bracelets and necklaces as well as its substantial market in China as shown in Annexes D, G and H to the Complaint will make actual confusion among consumers even more likely.” (Swarovski Aktiengesellschaft v. siqi Ai AKA aisiqi, WIPO Case No. D2010-2057). The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name. (see paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the HUGO BOSS trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the HUGO BOSS trademark since the year 1986. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainant provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “The Complainant’s trade mark rights in BOSS and HUGO BOSS are clear and these marks are certainly well-known marks in the fashion industry” (see Hugo Boss Trade Mark Management GmbH & Co. KG v. Domain Admin / Personal, Luong Dinh Dung, WIPO Case No. D2011-0564).
See also: “it is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark HUGO BOSS or that the Domain Names at issue might be of some type of economic advantage” (see Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or online location to which the disputed domain name resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name resolves.
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent’s use of the highly distinctive trademark of the Complainant on the website under the disputed domain name is also suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with a longstanding reputation is intended to make an impression of an association with the Complainant (see Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065).
Thus, it would have been pertinent for the Respondent to provide an explanation of his choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc./Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).
The Complainant submitted evidence proving that the Respondent was using the disputed domain name to promote goods that are on their face identical to the goods being offered by the Complainant.
Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. (see Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.)
Further, the Complainant submitted evidence proving that the Respondent has incorporated the HUGO BOSS marks on its website in order to attract consumers for commercial gain by purporting to sell the Complaint’s products: “Respondent’s bad faith registration and use is affirmed in the fact that the disputed domain name directed Internet users to a variety of products such as ‘necklaces’, ‘bracelets’ and ‘earrings’ using an identical name to the Complainant’s trademark. That past practice confirms not only the Respondent’s awareness that the advertised products were ‘Swarovski’ products, but also the Respondent’s actual use of the Complainant’s name in bad faith” (see Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170). The Panel also notes that the website does not accurately and prominently disclose the Respondent’s relationship with the Complainant.
The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant’s trademarks and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <hugobossuksale.com> be transferred to the Complainant, namely HUGO BOSS AG.
Jonathan Agmon
Sole Panelist
Date: March 31, 2015