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 Meidan of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2014. On December 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2015.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 9, 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. 4. Factual Background
The Complainants are part of the same business group and own the mark HUGO BOSS, a leading brand in the premium and luxury segment of the global apparel market.
The Complainants own numerous trademark registrations for HUGO BOSS worldwide.
The Complainants also own multiple domain names comprising the HUGO BOSS trademark, including the domain name , registered in 1997.
The Respondent registered the disputed domain name on October 27, 2014.
The Panel accessed the disputed domain name on February 20, 2015, when it was linked to an e-commerce website selling clothes under the title “HUGO BOSS OUTLET STORE”. 5. Parties’ Contentions A. Complainants
The Complainants make the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights. The HUGO BOSS Group was founded in 1924 and is one of the market leaders in the premium and luxury segment of the global apparel market. The Complainants own several variations of the trademark HUGO BOSS around the world, including BOSS, BOSS ORANGE, BOSS GREEN and HUGO, covering a comprehensive range of products. The Complainants also own and operate websites on numerous domain names such as . The Complainants’ trademark HUGO BOSS has been considered internationally well-known in previous UDRP cases. The disputed domain name is identical to the Complainants’ trademarks HUGO BOSS. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion “HUGO BOSS” and is therefore irrelevant in the determination of the confusingly similarity between the signs. The addition of the descriptive terms “outlet” and “store” shall not influence the comparison between the conflicting signs.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. HUGO BOSS constitutes the Complainants’ name and main trademark. The Complainants have not licensed or otherwise authorized the Respondent to use the HUGO BOSS trademark or to apply for any domain name incorporating that mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since the website clearly shows online selling activities that are not agreed by the Complainants. There is no holder of rights to the expression “HUGO BOSS” other than the Complainants in either the Trademark Offices or in the Registry of Companies. The Respondent’s name does not coincide with the disputed domain name. 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. The Respondent must have had knowledge of the Complainants’ rights when he registered the disputed domain name. The disputed domain name is being linked to a website selling clothing articles under the trademark HUGO BOSS, without authorization from its brand owner. Furthermore, it is obvious that the disputed domain name has been registered to create confusion and mislead Internet users into believing that the Complainant and the Respondent are affiliated or to endorse the respective website. The bad faith of the Respondent can also be demonstrated through the absence of terms of use for the website and of security and privacy rules. The Respondent re-created or imitated the design of the Complainants’ official website at , attempting to mislead the consumer and to attract for commercial gain Internet users who could think it is a website managed by the Complainants. Several UDRP decisions have already determined the transfer to the Complainants of unfair domain name registrations comprising the trademark HUGO BOSS. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG are part of the same business group and have common rights in the HUGO BOSS trademark, being therefore both accepted as the Complainants in the present case.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three 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. A. Identical or Confusingly Similar
The Panel has no doubt that “HUGO BOSS” is a term directly connected with the Complainants’ activities in the clothing business worldwide.
Annexes 4 and 5 to the Complaint show dozens of registrations of HUGO BOSS trademarks obtained by the Complainants worldwide since 1980.
The trademark HUGO BOSS is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainants’ trademark basically by the addition of the words “outlet” and “store” after the words “HUGO BOSS”, as well as the gTLD denominator “.com”.
Previous UDRP decisions have demonstrated that descriptive additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is also already well established that the addition of a gTLD extension such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark, and that the Complainants have satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants have not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainants have been using the the disputed domain name for the commercial purpose of selling goods under the Complainants’ brand, without authorization.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainants have proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2014) the trademark HUGO BOSS was already evidently well known worldwide and directly connects to the Complainants’ activities in the clothing business.
The disputed domain name encompasses the trademark HUGO BOSS, together with the descriptive words “outlet” and “store”. The website to which the disputed domain name is linked reproduces the Complainants’ trademark HUGO BOSS, purports to sell products under the HUGO BOSS brand and is titled “HUGO BOSS OUTLET STORE”.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainants’ trademark, as well as that that the use of the expression “hugobossoutletstore” could be a mere coincidence.
Furthermore, there is no disclaimer clarifying the relationship between the Respondent and the Complainants.
Using the disputed domain name to sell products under competition with the HUGO BOSS official stores, the Respondent:
(i) creates a likelihood of confusion with the Complainants’ trademark; and
(ii) obtains revenue from this practice; and
(iii) deprives the Complainants from selling their products to prospective clients who are clearly looking for the Complainants.
Former UDRP decisions have considered this type of usage of a domain name enough to demonstrate bad faith. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Such circumstances, associated with the lack of any plausible interpretation for the adoption of the expression “HUGO BOSS” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainants have also satisfied the third element of the Policy. 7. Decision
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 be transferred to the Complainant HUGO BOSS AG.
Rodrigo Azevedo
Sole Panelist
Date: February 24, 2015
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