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 Li Ning of Hong Kong, China.
The disputed domain name <cheaphugobossukshop.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 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.
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 proceeding commenced on April 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2016.
The Center appointed Richard Hill as the sole panelist in this matter on May 13, 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 have rights in the mark HUGO BOSS around the world, including in China, with rights dating back to 1984. The mark is famous.
The Complainants did not license or authorize the Respondent to use their mark.
The disputed domain name was registered on July 1, 2015.
The disputed domain name resolved to a web site that prominently displayed the Complainants’ mark and whose design was very similar to that of the Complainants’ legitimate web site. The web site at the disputed domain name offered clothing for sale.
The Complainants state that they are part of the HUGO BOSS Group, which was founded in 1924 and is one of the market leaders in the premium and luxury segment of the global apparel market. The Group focuses on the development and marketing of premium fashion and accessories for men and women.
Headquartered in Metzingen, the Company generated with almost 14,000 employees net sales of EUR 2.8 billion in fiscal year 2015, making it one of the most profitable listed apparel manufacturers in the world. The group uses its mark HUGO BOSS to market its goods around the world. The mark HUGO BOSS has been registered around the world, including in China, with rights dating back to 1984. The mark and the Group’s products are famous.
According to the Complainants, the disputed domain name is confusingly similar, in the sense of the Policy, to its mark because it contains the Complainants’ mark in its entirety and adds the purely descriptive terms “cheap”, “uk”, and “shop”. The Complainants cite UDRP precedent to support their position.
The Complainants allege that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent’s name does not coincide with the disputed domain name and the Complainants have not licensed or otherwise authorized the Respondent to use their trademarks or to apply for any domain name incorporating their trademarks. Further, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since the web site at the disputed domain name prominently featured the Complainants’ mark and offered for sale clothing apparel, and this without being authorized to do so by the Complainants.
Further, the Complainants contend that 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 that the Complainants endorse the web site at the disputed domain name. Indeed, the web site at the disputed domain name was very similar in design to the Complainants’ legitimate web site: this clearly represents an attempt to wrongly lead the consumer and attract for commercial gain Internet users who could think it is a web site managed by the Complainants. This constitutes bad faith registration and use under the Policy. The Complainants cite UDRP precedents to support their position.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name contains the Complainants’ registered and well-known trademark HUGO BOSS its entirety. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety, see Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; Chloé S.A.S. v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-0039. Further, the addition of the descriptive terms “cheap”, “shop”, and the geographic designation “uk” do not suffice to avoid a finding of confusing similarity. See MasterCard International Incorporated c. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Arthur Guinness Son & Co. (Dublin) Limited. c. Tim Healy/BOSTH, WIPO Case No. D2001-0026; Shenzhen Mindray Bio-Medical Electronics Co., Ltd. v. Laura E Torres, WIPO Case No. D2015-0771; Aktiebolaget Electrolux v. Paulo Henrique Petrucci, WIPO Case No. D2013-1587.
The Panel finds that the Complainants have satisfied their burden of proof for this element of the Policy.
The Respondent has not been licensed or otherwise authorized to use Complainants’ mark. There is no evidence in the case file to indicate that the Respondent is commonly known by the disputed domain name.
The web site at the disputed domain name prominently displayed the Complainants’ famous mark and was designed to look like the Complainants’ legitimate web site. This is not a legitimate use of the disputed domain name.
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.
The Panel finds that the Complainants have satisfied their burden of proof for this element of the Policy.
The Respondent (who did not reply to the Complainants’ contentions) has not presented any plausible explanation for his use of Complainants’ famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed domain name.
It is obvious from the web site at the disputed domain name that the Respondent was well aware of the Complainants’ famous mark and products. Further, the disputed domain name itself indicates that the Respondent intended to use the disputed domain name to sell clothes, using the Complainants’ famous mark to attract Internet users. Therefore the Panel finds that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the trademark HUGO BOSS as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. See HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Hu Hui, WIPO Case No. D2015-2144; Hugo Boss Trade Mark Management GmbH & Co. KG, Hugo Boss AG v. freeoakley / WhoisGuard, WIPO Case No. D2013-0540.
The Panel finds that the Complainants have satisfied their burden of proof for this element 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 <cheaphugobossukshop.com> be transferred to HUGO BOSS AG.
Richard Hill
Sole Panelist
Date: May 14, 2016