The Complainants are Hugo Boss Trade Mark Management GmbH & Co. KG (the "first Complainant") and Hugo Boss AG (the "second Complainant") both of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is xian fengdao, ghjktgykityjurthrde degfrvc of China.
The disputed domain name <hugobossoutlet.net> is registered with Xin Net Technology Corp. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2015. On November 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 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.
On November 5, 2015, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainants requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2015.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 10, 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 Complainants are part of the Hugo Boss corporate group headquartered in Germany that focuses on the development and marketing of premium fashion and accessories for men and women. The first Complainant owns registrations of trademarks consisting of the words HUGO BOSS in many jurisdictions around the world in respect of multiple classes of goods and services, including class 25 (clothing and accessories) and class 35 (advertising and other services). Its registrations include Community Trademark No. 000049254, registered from 2008; International Registration No. 430400 registered from 1977; and Chinese trademark No. 253481 registered from 1986. The second Complainant operates many websites including "www.hugoboss.com".
According to the Registrar's WhoIs database, the disputed domain name was registered on January 27, 2015. The Registrar confirmed that the name of the registrant is "xian fengdao". The registrant's organization name and address are in gibberish and manifestly false. The disputed domain name resolves to a website in English that displays the HUGO BOSS trademark and offers clothing for sale.
The Complainants own the above trademark registrations. The disputed domain name is identical to the Complainants' HUGO BOSS trademark and domain names because it wholly incorporates the words "Hugo Boss". The word "outlet" is a descriptive term and does not influence the comparison with the trademark.
The Complainants have not licensed or otherwise authorized the Respondent to use their trademarks or to apply for any domain name including their trademarks. Given the fame of the HUGO BOSS trademark and the number of registrations of that trademark, the Respondent cannot have any rights or legitimate interests in the disputed domain name.
The Complainants' trademark is well known and the Respondent must have known of it when he registered the disputed domain name. There is no bona fide offering of goods or services on the website because it sells clothing under the HUGO BOSS name. The disputed domain name has been registered to create confusion and mislead Internet users. The website recreates or imitates the design of the Complainants' official website.
The Complainants request transfer of the disputed domain name to the second Complainant.
The Respondent did not reply to the Complainants' 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainants request that the language of the proceeding be English. Their main arguments are that English is the main language of fashion and the Internet; the disputed domain name uses the Complainants' trademark in identical form in Latin characters; that the Complainants are based in Germany where Chinese is not a current language; and it would be unreasonable for the Complainants to bear the cost of translating the Complaint.
The Panel notes that all the Center's email communications with the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainants' request that English be the language of the proceeding but the Respondent did not in fact object or express any wish to respond to the Complaint.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Panel observes that in this proceeding the Complaint was filed in English. The Respondent's website is in English and it is therefore reasonable to believe that the Respondent is familiar with that language. The Panel also notes that the automatically-generated replies from the Respondent's website to the Center's email communications were also in English. The Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group. The first Complainant owns the group's trademark registrations while the second Complainant uses the trademark to operate the group's websites. The Panel finds that they have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as "the Complainant" except as otherwise indicated.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of the words "hugo boss".
The disputed domain name incorporates the Complainant's trademark in its entirety. The Complainant's trademark is the dominant element of the disputed domain name. The disputed domain name contains the additional element "outlet" which is merely a generic word and, as such, not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. (See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; HUGO BOSS Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Ludwig Rhys, WIPO Case No. D2015-0280, <hugobossshopoutlet.com>).
The disputed domain name also contains the generic Top-Level Domain ("gTLD") suffix ".net" but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080). Consequently, the only distinctive element of the disputed domain name for the purposes of this comparison is the Complainant's trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first circumstance, the disputed domain name is being used with a website that offers for sale what is alleged to be the Complainant's clothing and accessories. The evidence does not show that website displays products from any other source. The Complainant states that it has no connection whatsoever with the Respondent. The Respondent did not respond. Whether or not the products are counterfeit or genuine, the Panel notes that the website does not accurately disclose the Respondent's lack of any relationship to the Complainant. Given that the disputed domain name is confusingly similar to the Complainant's trademark, the Panel considers that the Respondent's website is very likely to confuse Internet users. These facts show that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is "xian fengdao". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers clothing and accessories for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location."
The Respondent registered the disputed domain name in 2015, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The only distinctive element of the disputed domain name is identical to the Complainant's trademark; the additional element "outlet" being a generic term. The website with which the disputed domain name is used displays the Complainant's trademark and offers for sale what is alleged to be the Complainant's clothing and accessories. This indicates to the Panel that the Respondent intentionally chose to register the Complainant's trademark and use it as a domain name.
The Respondent uses the disputed domain name, which wholly incorporates the Complainant's trademark, with a website to offer clothing for sale. The Respondent's website repeatedly displays the Complainant's trademark while the design of the website is similar to the layout of a page offering similar goods on the Complainant's official website. The Respondent has no connection with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. Given these facts, the Panel considers that the Respondent's use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products on that website. Moreover, the Respondent provided false contact information in its registration agreement which is also an indication of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <hugobossoutlet.net> be transferred to the second Complainant Hugo Boss AG.
Matthew Kennedy
Sole Panelist
Date: December 14, 2015