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 Williams Tyisha of China.
The disputed domain name <salebossonline.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 5, 2016. On February 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2016, 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 February 15, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 18, 2016, 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 February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on March 21, 2016. 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 (hereafter, just referred to as the “Complainant”) form part of the “Hugo Boss” group of companies based in Germany. Hugo Boss is a well-known premium fashion and accessory group founded in 1924 with almost 13,000 employees and 1,000 retail outlets around the world. In 2014, it generated worldwide net sales of EUR 2.6 billion.
The brand world of Hugo Boss comprises the collections of Boss, Boss Orange, BOSS Green and Hugo, covering a comprehensive product range encompassing fashion wear and accessories, fragrance, home textiles and mobile accessories.
The Complainant owns numerous trade mark registrations for the word marks BOSS and HUGO BOSS around the world, including the following:
Jurisdiction | Mark | Registration No. | Registration Date |
|
International Registration |
BOSS |
456092 |
October 9, 1980 |
|
International Registration |
BOSS |
423213 |
May 24, 1976 |
|
International Registration |
BOSS |
515189 |
September 11, 1987 |
|
International Registration |
BOSS |
483341 |
February 8, 1984 |
|
International Registration designating China |
BOSS |
637482 |
May 31, 1995 |
|
International Registration designating China |
BOSS |
773035 |
August 16, 2001 |
The Complainant also owns several domain names incorporating its trade mark BOSS, including the following:
- <boss.com> registered on September 14, 1993; and
- <boss.co.uk> registered on December 19, 2005.
The disputed domain name <salebossonline.com> was registered by the Respondent on September 28, 2015, long after the Complainant’s registration of the BOSS trade mark (in 1976). The disputed domain name resolves to a website under the BOSS banner, seemingly offering for sale clothing, shoes, belts and other accessory products under the BOSS and HUGO BOSS brands and sub-brands. The website is completely in English.
5.1 The Complainant refers to its business, trade marks and registered domain names and claims that the disputed domain name is identical to those trade marks and domain names.
5.2 The Complainant contends that given the Complainant’s mark and fame, there are no imaginable circumstances under which the Respondent could legitimately use the disputed domain name, especially since the Respondent’s name does not correspond to the disputed domain name or to Boss. It contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark or to apply for any domain name incorporating the BOSS trade mark, the Respondent’s use of the disputed domain name to sell Boss and Hugo Boss fashion collections online is neither a legitimate noncommercial use or fair use of the disputed domain name.
5.3 The Complainant contends that as the Respondent is selling Boss and Hugo Boss fashion collections on its website without the permission of the Complainant, there is no bona fide offering of goods or services. It further contends that the disputed domain name has been registered to create confusion and mislead Internet users into believing that the Respondent’s website is in some way connected with or endorsed by the Complainant. The Complainant supports this by saying that the look and feel of the Respondent’s website imitates the Complainant’s original websites, and that such bad faith use is further demonstrated by the absence of website “terms of use”.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name to Hugo Boss AG.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters comprising common English words, rather than Chinese script;
(b) the disputed domain name resolves to a website which is entirely in English;
(c) the Respondent appears to be an individual by the name of “William Tyisha” and is presumably not a native Chinese speaker; and
(d) the Respondent’s email address is “heartyricher66@[…].com” which is in Latin characters comprising common English words rather than Chinese script.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center informed the Respondent that it would accept a Response in either English or Chinese; and
(c) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so.
Considering the above 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. To require the Complaint to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark 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 the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in the BOSS mark by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant’s trade mark BOSS in its entirety. The addition of the descriptive words “sale” and “online” do not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s trade mark. The addition of the generic Top-Level-Domain (gTLD) “.com” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the BOSS trade mark or register the disputed domain name. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “Boss”.
The Panel notes that the Respondent is using the disputed domain name to publish a website that offers for sale the Complainant’s fashion collections under the BOSS and HUGO BOSS brands and sub-brands. Indeed, by using the HUGO BOSS and BOSS trade marks on its website without disclaimers disclosing the lack of a business relationship between itself and the Complainant, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website “www.salebossonlilne.com” is somehow connected with the Complainant, and divert Internet users looking for the Complainant’s fashion products to the Respondent’s website.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.
The Respondent has failed to respond. Since no response was filed, the prima facie case has not been rebutted.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the 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 registrations to the Complainant who is the owner of the trade mark 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 trade mark 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 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 websites or location or of a product or service on the Respondent’s website or location.
Given the worldwide fame of the Complainant and its BOSS trade mark, it is reasonable to believe that the Respondent had prior knowledge of the Complainant’s rights in the BOSS mark at the time of its registration of the disputed domain name. Registration of a domain name that incorporates the Complainant’s long-established and well-known trade marks suggests opportunistic bad faith.
The Panel determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Given the observation above that the Respondent has not accurately disclosed its relationship (or more precisely lack thereof) with the Complainant and the Panel’s consequent finding that the Respondent lacks rights or legitimate interests in the disputed domain name, this case can be simply dealt with on the basis that the disputed domain name involves an impersonation of the Complainant so as to benefit from confusion created by the disputed domain name itself. Such registration and use of the disputed domain name is abusive in the Panel’s opinion.
The Panel also notes that efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.
Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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 <salebossonline.com> be transferred to the Complainant Hugo Boss AG.
Sok Ling MOI
Sole Panelist
Date: April 6, 2016