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 Xu Feilong of Kunmin, Yunnan, China.
The Disputed Domain Name <hugo-bossoutlet.org> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2016. On December 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 6, 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 December 6, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainants confirmed their request that English be the language of the proceeding on December 7, 2016. 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 in Chinese and English of the Complaint, and the proceeding commenced on December 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2017.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 17, 2017. 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 belong to the Hugo Boss Group. The Hugo Boss Group was founded in 1924 and is a leader in the premium and luxury segment of the global apparel market. The Hugo Boss Group has almost 14,000 employees and generated net sales of EUR 2.8 billion in fiscal year 2015.
The First Complainant, Hugo Boss Trade Mark Management GmbH & Co. KG, is the owner of a substantial number of registrations for the trademark HUGO BOSS worldwide including the following:
|
Jurisdiction |
Trademark No. |
Registration Date |
|
European Union |
000049254 |
March 26, 2008 |
|
European Union |
006645204 |
November 26, 2012 |
|
International |
430400 |
June 3, 1977 |
|
International |
513257 |
April 10, 1987 |
|
International |
637658 |
May 31, 1995 |
|
China |
9277541 |
April 28, 2012 |
|
China |
1960721 |
September 14, 2002 |
|
China |
949338 |
February 21, 1997 |
|
China |
253481 |
June 30, 1986 |
|
Hong Kong, China |
1991B0042 |
January 11, 1991 |
The Second Complainant, Hugo Boss AG, is the registrant of numerous domain names incorporating HUGO BOSS trademarks, including <hugo.com>, <hugoboss.com> and <hugoboss.co.uk>.
The trademark HUGO BOSS has been the subject of past disputes under the Policy (e.g., Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin / Personal, Loung Dinh Dung, WIPO Case No. D2011-0564; HUGO BOSS AG, HUGO BOSS Trademark Management GmbH & Co. KG v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise Ltd, WIPO Case No. D2012-0273; HUGO BOSS Trademark Management GmbH & Co. KG, HUGO BOSS AG v. freeoakley / WhoisGuard, WIPO Case No. D2013-0540; HUGO BOSS Trademark Management GmbH & Co. KG v. Guanjing / Daziran, WIPO Case No. D2014-0801). In particular, the panel in Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin / Personal, Loung Dinh Dung, supra held that the HUGO BOSS trademark was a well-known mark.
The Disputed Domain Name was registered on April 30, 2015. The Disputed Domain Name resolves to a website (the "Respondent's Website") that is written entirely in English and features the trademark "HUGO BOSS" prominently. The Respondent's Website offers alleged HUGO BOSS branded products for sale, complemented by ostensible online shopping cart facilities.
The Respondent appears to be an individual based in Yunnan, China. Beyond the WhoIs information of the Disputed Domain Name and the Registrar Verification in this proceeding, little information about the Respondent is known. Attempts to deliver the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent via email, and the Written Notice to the Respondent via facsimile and courier have failed.
The Complainants contend that:
a) The Disputed Domain Name is identical or confusingly similar to the trademark HUGO BOSS in which the Complainants have rights. The Disputed Domain Name incorporates the trademark HUGO BOSS in its entirety. The addition of the term "outlet" in the Disputed Domain Name is used for descriptive purposes and does not influence the comparison of the Disputed Domain Name and the trademark HUGO BOSS;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The trademark HUGO BOSS has not been licensed or authorized to the Respondent for use or for registration as part of a domain name. The Respondent's name does not coincide with the Disputed Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. The website resolved from the Disputed Domain Name shows online selling activities not authorized by the Complainants. There is no other right holder to the name "HUGO BOSS" other than the Complainants in either the Trademark offices or the Registry of Companies; and
c) The Disputed Domain Name was registered and is being used in bad faith. The trademark HUGO BOSS is well known and the Respondent must have had knowledge of the Complainants' rights when the Disputed Domain Name was registered. The Respondent's Website offers to sell clothing articles under the trademark HUGO BOSS which was not allowed by the Complainants. Therefore, the Disputed Domain Name is not used for any bona fide offering of goods or services. Clearly, the Disputed Domain Name was registered to create confusion amongst Internet users and mislead them into believing that the Complainants and the Respondent are affiliated or the Respondent's Website is endorsed. The Respondent's Website essentially represents an attempt to wrongly lead the consumer and attract for commercial gain Internet users who could think that it is managed by the Complainants.
The Respondent did not reply to the Complainants' 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.
The Registrar has affirmed that the language of the Registration Agreement for the Disputed Domain Name is Chinese. However, the Complainants filed their Complaint in English and have requested that English be the language of the proceeding. Having considered the circumstances, the Panel allows the Complainants' request, having taken into account the following factors:
a) No objection was received from the Respondent to having the Complaint filed in English;
b) The Complainants are based in Germany where Chinese is not a common language;
c) The Respondent's Website was entirely in English and it thus demonstrates a working knowledge of the English language by the Respondent;
d) The Complaint has already been filed in English, to which the Respondent did not respond. Requiring that the Complaint be translated into Chinese would place an unnecessary burden on the Complainants under the circumstances;
e) The Respondent could not be contacted with the email, facsimile and postal details provided in the Who-Is information of the Disputed Domain Name and no other means of contacting the Respondent was available;
f) Requiring a Chinese translation of the Complaint will lead to unnecessary delay in the proceeding; and
g) No apparent benefit may foreseeably be achieved by requiring the Complaint to be filed in Chinese.
In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
d) The Disputed Domain Name was registered and is being used in bad faith.
Based on the trademark registrations in the evidence tendered, it is established that the First Complainant owns rights in the trademark HUGO BOSS. The trademark HUGO BOSS is incorporated such that it is readily recognizable within the Disputed Domain Name given that the latter incorporates the trademark wholly.
The Panel is of the view that the Disputed Domain Name is confusingly similar to the HUGO BOSS trademark. The only differences between the trademark HUGO BOSS and the Disputed Domain Name are the addition of the term "outlet" as well as the use of a hyphen in between the words "hugo" and "boss". The Panel accepts that the descriptive term "outlet" does not assist to distinguish the Disputed Domain Name from the HUGO BOSS mark in accordance with the consensus view of past UDRP panels. The consensus opinion of past UDRP panels, outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), is that the mere addition of generic or descriptive terms to a trademark in a domain name does not mitigate the confusing similarity between the mark and the domain name. Moreover, several previous UDRP panels have held that the use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity between the domain name and the mark (see among others: Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630; Easy Gardener Products, Inc. v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc., WIPO Case No. D2010-1185).
The Panel does not see any reason to depart from this consensus view and finds that the addition of the term "outlet" in combination with a hyphen does not assist to distinguish the Disputed Domain Name from the trademark HUGO BOSS. Accordingly, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark HUGO BOSS. The first limb of paragraph 4(a) of the Policy is established.
The Complainants bear the burden of establishing prima facie that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such prima facie case is made out, the burden shifts to the Respondent to show otherwise. The Complainants have maintained that the Respondent was never authorized, licensed or otherwise allowed by the Complainants to use the trademark HUGO BOSS or to register a domain name incorporating the same.
There is no evidence to show that the Respondent is commonly known by the Disputed Domain Name. The website resolved from the Disputed Domain Name contains obvious claims and implications which associate it with the trademark HUGO BOSS (e.g., copyright notice in the footer). With such false representations, there is no bona fide or legitimate noncommercial use where the Disputed Domain Name serves as a "bait" to misleadingly attract customers to the Respondent's Website. Therefore, the Panel finds prima facie that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. In the absence of any evidence or explanation to the contrary offered by the Respondent, the prima facie case has not been rebutted and the Panel holds that the second limb of paragraph 4(a) of the Policy is also established.
Paragraph 4(b) of the Policy sets out circumstances which, if fulfilled, constitutes evidence of bad faith registration and use of a domain name. In particular, paragraph 4(b)(iv) of the Policy provides that:
"by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your 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 your web site or location or of a product or service on you web site or location."
Based on the evidence before the Panel, the Panel is satisfied that the trademark HUGO BOSS is sufficiently well known in the luxury apparel market. In view of the manner in which the trademark HUGO BOSS is used on the Respondent's Website, the Panel finds it impossible to conceive of a plausible situation in which the Respondent would have been unaware of the trademark HUGO BOSS at the time of registration. The most obvious explanation behind the adoption of the Disputed Domain Name would be the Respondent's knowledge and familiarity with the trademark HUGO BOSS and its associated goods. In light of this, the Panel finds it most unlikely that the Respondent derived the Disputed Domain Name purely by coincidence.
The Respondent's intention of commercial gain in using the Disputed Domain Name is evident from the Respondent's Website by the offering of alleged HUGO BOSS branded products for sale, complemented by ostensible online shopping cart facilities. The Respondent has created a substantially similar website to the Complainants' website and has used the HUGO BOSS trademark prominently on the website located at the Disputed Domain Name. These descriptions can only have the effect of inappropriately affiliating the Respondent's Website with the Complainants and/or the trademark HUGO BOSS. Hence, it is clear that the Respondent attempted to capitalize on user confusion by directing traffic away from the Complainants' website and towards its own commercial website.
Given the above, the Panel is of the view that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's Website by creating a likelihood of confusion with the trademark HUGO BOSS as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website or of the products on the same within the meaning of paragraph 4(b) of the Policy.
As such, the Panel holds that the third limb of paragraph 4(a) of the Policy is made out.
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, <hugo-bossoutlet.org>, be transferred to the Second Complainant, Hugo Boss AG.
Kar Liang Soh
Sole Panelist
Date: January 31, 2017