The Complainant is 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 wangxiaonxiaowang of Hefei, Anhui, China.
The disputed domain name <hugobossclearancebest.com> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 22, 2016. On April 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 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 April 27, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 27, 2016, the Complainant confirmed its request 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 proceedings commenced on May 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 24, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 3, 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 are members of the Hugo Boss Group, which is one of the market leaders in the premium and luxury segment of the global apparel market. HUGO BOSS Trade Mark Management GmbH & Co. KG ("HUGO BOSS Trade Mark Management") owns various trademark registrations for the HUGO BOSS trademark around the world, including among others European Union Trademark No. 000049254 in International Classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 35, 42; European Union Trademark No. 006645204 in International Class16; International Trademark Registration No. 430400 in International Classes 18, 24, 25 designating more than 40 countries; and International Trademark Registration No. 637658 in International Classes 29, 20, 21, 32, and 33 designating more than 40 countries, including China, where the Respondent is located. HUGO BOSS Trade Mark Management also owns several trademark registrations in China for the HUGO BOSS trademark, including Nos. 9277541 in International Class 24; 1960721 in International Class 35; 949338 in International Class 25; and 253481 in International Class 25.
Furthermore, HUGO BOSS AG owns and operates websites at numerous domain names incorporating the HUGO BOSS marks, such as <hugoboss.com >, <hugoboss.co.uk> and <boss.com>.
The Respondent registered the disputed domain name on November 6, 2015. The disputed domain name resolves to a website selling the Complainants' merchandise under the HUGO BOSS trademark. The website advertises "Hugo boss outlet, Hugo boss suits, Hugo boss clearance" and prominently features the HUGO BOSS trademark throughout.
The HUGO BOSS Group was founded in 1924 and focuses on developing and marketing premium fashion and accessories for men and women. Headquartered in Metzingen, Germany, the Group has almost 14,000 employees and generated net sales of EUR 2.8 billion in the fiscal year of 2015, making it one of the most profitable listed apparel manufacturers in the world. The HUGO BOSS brands cover a broad product range including but not limited to apparel, eveningwear and sportswear, shoes, licensed fragrances, watches, and eyewear. HUGO BOSS leverages targeted marketing measures to raise the appeal of its brand, and the relevant target groups are increasingly reached using digital channels.
The HUGO BOSS trademark has been considered internationally known in prior UDRP cases, such as, Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin/Personal, Loung Dinh Dung, WIPO Case No. D2011-0564.
The disputed domain name is identical or at least confusingly similar to the HUGO BOSS trademark. The test of identity or confusing similarity under the Policy is limited to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors that are usually considered in a trademark infringement case. See Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698. The disputed domain name wholly incorporates the words "hugo boss". The addition of the generic Top-Level Domain ("gTLD ") ".com" to the disputed domain name is irrelevant in determining confusing similarity because it has no impact on the overall impression of the dominant portion of the name "hugo boss". See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Additionally, the descriptive terms "best" and "clearance" in the disputed domain name should not influence the comparison of the disputed domain name and the HUGO BOSS trademark. Therefore, the disputed domain name is identical or at least confusingly similar to the HUGO BOSS trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The HUGO BOSS Group has not licensed or otherwise authorized the Respondent to use the HUGO BOSS trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because the website clearly shows online selling activities that are not agreed to by the Complainants. No one other than the Complainants hold rights to the name "Hugo Boss" in the various international trademark offices or the registries of companies. The Respondent's name does not coincide with the disputed domain name. Furthermore, knowing the impressive number of trademarks and domain names registered by the Complainants in addition to their fame, goodwill, and notoriety, there are no imaginable circumstances under which the Respondent could legitimately use the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Because the HUGO BOSS trademark is well-known, the Respondent must have had knowledge of the Complainants' rights when the Respondent registered the disputed domain name. The Respondent is using a domain name to direct customers to a website that offers for sale HUGO BOSS clothing without the Complainants' authorization. The disputed domain name was registered to create confusion and to mislead Internet users into believing that the Complainants are affiliated with or endorse the website associated with the disputed domain name. The website associated with the disputed domain name re-creates or imitates the design of the Complainants' website at "www.hugoboss.com". This conduct is clearly an attempt by the Respondent to wrongly lead consumers and to attract for commercial gain Internet users who may think the website associated with the disputed domain name is managed by the Complainants. Additionally, the absence of terms of use within the website demonstrates bad faith.
This is not the first time the HUGO BOSS trademark has been subject to unfair domain name registrations and prior UDRP panels have transferred those domain names to the Complainants. See HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. freeoakley / WhoisGuard, WIPO Case No. D2013-0540 (<metsingenhugoboss.com>); HUGO BOSS AG, HUGO BOSS Trade Mark Management GmbH & Co. KG. v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise Ltd, WIPO Case No. 2012-0273 (<portalhugoboss.com>); HUGO BOSS A.G. v. Abilio Castro, WIPO Case No. DTV2008-0001 (<hugoboss.tv>). The panel decision in HUGO BOSS Trade Mark Management GmbH & Co. KG v. Guanjin / Daziran, WIPO Case No. D2014-0801 (<hugobossoutletsale.com), should be applied in this case because the facts are highly similar. The panel determined that the Complainant HUGO BOSS Trade Mark Management is the registered proprietor of the HUGO BOSS trademark. The panel called the case "clear domain name hijacking for the purposes of commercial gain which the UDRP was designed to stop". The respondent in that case used the disputed domain name to point to a website featuring the Complainant's trademark prominently and offering for sale counterfeit products, which the panel concluded "make[s] it hard to imagine that the Respondent could ever establish any rights of legitimate interests".
The Complainants request that the disputed domain name be transferred to HUGO BOSS AG.
The Respondent did not reply to the Complainants' contentions.
The Policy provides for transfer or cancellation of the disputed domain name if the Complainants establish each of the following elements set out in Paragraph 4(a):
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
The Panel finds that the Complainants have met this burden.
As an initial matter, paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. Although the language of the Registration Agreement is Chinese and the Respondent is located in China, the Respondent's conduct suggests the Respondent understands English. The disputed domain name currently points to a website containing exclusively English text. The disputed domain name itself includes the English terms "clearance" and "best". When these terms are paired with the website advertising retail outlet services and clearance merchandise, it is clear the Respondent understands these terms. Therefore, the Panel determines that the language of the proceeding should be English.
The Complainants have rights in the HUGO BOSS mark. The HUGO BOSS Group is the registered owner of many international trademark registrations for HUGO BOSS marks, registered long before the Respondent registered the disputed domain name. The Panel accepts that the Complainants' marks are internationally well-known.
The Panel finds that the disputed domain name is confusingly similar to the Complainants' trademark. The threshold question for confusingly similar under the UDRP involves the comparison between the trademark and the domain name itself to determine the likelihood of internet user confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2. The descriptive terms "clearance" and "best" do not impact the overall impression of the disputed domain name and are insufficient in preventing Internet user confusion. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414. Additionally, the ".com" gTLD extension, being a technical part of the domain name, does not affect the assessment of whether the disputed domain name is confusingly similar to the Complainants' HUGO BOSS mark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent 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.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainants contend and the Respondent does not deny that the Complainants never licensed or authorized the Respondents to use their HUGO BOSS trademark or to apply for any domain name incorporating the trademark. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Although the disputed domain name resolves to a website selling products, this is not a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The disputed domain name resolves to a website selling products under the HUGO BOSS mark. The Complainant states that the use of its trademark is not authorized, but there is no evidence in the record to suggest that the Respondent is selling counterfeit goods under the HUGO BOSS mark through the website associated with the disputed domain name. Under certain circumstances, a reseller of trademarked products may legitimately register a domain name incorporating the trademark. However, in this instance, the Panel finds that the registration of the disputed domain name is not legitimate.
The Panel finds that the Respondent's offering of goods is not bona fide. To be "bona fide", a resale offering of goods must meet the following requirements: (i) the Respondent must actually be offering the goods at issue; (ii) the Respondent must use the website to sell only the trademarked goods; (iii) the website must accurate disclose the Respondent's relationship with the trademark owner and may not, for example, falsely suggest that it is the trademark owner or that the website is an official website of the trademark owner; and (iv) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in the domain names. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Though the Respondent is not an approved or authorized reseller of the Complainant's products, these criteria are nonetheless relevant because the Respondent operates a business genuinely revolving around the Complainants' goods. See BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, WIPO Case No. D2010-1038. Here, there is no evidence in the record indicating that the Respondent is offering counterfeit goods. The Respondent is using the website only to sell the trademarked goods. Additionally, there is no evidence in the record to suggest that the Respondent has registered more than one domain name including the HUGO BOSS trademark. However, the Panel finds that the website does not accurately disclose the Respondent's relationship with the trademark owner.
The Respondent's offering of goods is not bona fide because the website associated with the disputed domain name falsely suggests a relationship with the Complainants. The confusing similarity of the disputed domain name to the Complainants' trademark is highly likely to result in initial interest confusion of Internet users, particularly given that the Complainants' HUGO BOSS trademark is internationally well-known. The Respondent has no relationship with the Complainants. Not only does the Respondent fail to disclose that it is not associated with the Complainants, the Respondent goes further to affirmatively suggest a relationship. The website associated with the disputed domain name closely resembles the Complainants' website. The Respondent's website prominently and repeatedly displays the HUGO BOSS trademark. Moreover, the Respondent's website identifies the service provider as "Hugo boss clearance" and provides only an email address for contact information. It is readily apparent that the Respondent's website is meant to mislead consumers into believing it is a genuine website controlled by or associated with the Complainant. Such use of the disputed domain name is not consistent with the fair use principles underlying the Oki Data criteria above. See BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, supra. The Respondent's use of the disputed domain name to offer goods is not bona fide and therefore the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the 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 that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the 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 such web site or location or of a product or service on such web site or location.
The present case fits clearly within the situation described in paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent was undoubtedly aware of the Complainants and their trademark at the time of registration of the disputed domain name. HUGO BOSS Group is well-known throughout the world as is the HUGO BOSS trademark. It is quite clear from the nature of the Respondent's business and use of the disputed domain name that the Respondent has the Complainants' trademark in mind when registering the disputed domain name. The Panel finds that the Respondent's registration of a domain name incorporating the Complainants' mark, being fully aware of the Complainants' rights in the mark, without any right or legitimate interests in doing so is registration in bad faith.
As discussed above, the Respondent is using the disputed domain name to direct Internet users to a website that sells the Complainants' merchandise. The website incorporates the HUGO BOSS trademark throughout, but it does not offer any statements indicating the Respondent's and/or the website's lack of affiliation with the Complainants. Indeed, by copying the look and feel of the Complainants' website, the Respondent is affirmatively creating the false impression that the website is controlled by or affiliated with the Complainants. The Respondent has intentionally attempted to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainants' HUGO BOSS mark as to the source, sponsorship, affiliation, or endorsement of such website. These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Respondent is using the disputed domain name in bad faith.
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, <hugobossclearancebest.com>, be transferred to the Complainant, HUGO BOSS AG.
Kimberley Chen Nobles
Sole Panelist
Date: June 17, 2016