The complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG and Hugo Boss AG of Metzingen, Germany (together, the “Complainant”), represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Ludwig Rhys of 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 February 20, 2015. On February 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2015, 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 February 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2015.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on March 30, 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 facts relevant to the decision in this case are that:
1. the Complainant1 sells luxury fashion goods by reference to the registered trade mark, HUGO BOSS;
2. the trade mark is, inter alia, the subject of (European) Community Trade Mark Registration No. 492542 ;
3. the disputed domain name was registered on December 31, 2014;
4. at the time the Complaint was filed, the disputed domain name resolved to a website showing goods of the same kind as those sold by the Complainant which carried the trade mark;
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in HUGO BOSS and alleges that the disputed domain name is identical or confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Procedural Issue: multiple complainants
In this case there are two complainants. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)3 asks at paragraph 4.16: Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents? In response, the consensus viewpoint is that:
“WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
The Panel remarks that, in general, the Complaint is not reasoned as carefully as it might have been. It is, for example, merely said that:
“In this matter there are multiple Complainants as there is a common grievance against the Respondent because, on the one side, there is a common legal interest in a relevant right or rights that are allegedly affected by the Respondent´s conduct and on the other side, the multiple Complainants are the target of common conduct by the Respondent which has clearly affected their individual legal interests.”
Nonetheless, the Panel can see for itself that HUGO BOSS Trade Mark Management GmbH & Co. KG is the registrant of the rights forming the trade mark portfolio and assumes that Hugo Boss AG is the group holding company. The Panel therefore understands that those two companies have a common grievance and that it is efficient to allow them to bring these proceedings together being nominated as a single “Complainant”. B. Primary Issues
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. Having considered the Complaint and the available evidence, the Panel finds the following: i. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy4 . The Complainant provides evidence of registration of the trade mark and the Panel accepts that the Complainant has trade mark rights.
The Complainant submits that “[T]he domain name is identical to the Complainants’ trademarks (sic) HUGO BOSS and domain names as it wholly incorporates the words ‘HUGO BOSS’.” The Panel rejects that submission as senseless. The question is whether the disputed domain name is confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic Top-Level Domain “.com” can be ignored.5 The terms then differ by the addition of the purely descriptive phrase “shop outlet” which, in the opinion of the Panel, has no significant effect on the overall impression of the terms which might avoid confusion.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. ii. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests6 .
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
The publicly available WhoIs database identifying the Respondent as registrant does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. The disputed domain name resolves to a website where fashion goods are offered for sale by reference to the trade mark. There is no suggestion in the Complaint that the goods shown there are counterfeit copies of the Complainant’s goods but nor is that relevant if the Respondent has not been authorized to use the trade mark and does not otherwise satisfy (which it does not) the criteria first laid out in the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. iii. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
ii. you have 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 you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. 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 your web site or location.”
It is plain to the Panel that the Respondent’s conduct falls squarely under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark. The Panel finds that the likelihood of confusion as to the source is therefore highly likely. Paragraph 4(b)(iv) also requires an intention for commercial gain on the part of the Respondent. The resolving website exists for the purpose of commercial gain.
The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and with the Complainant’s request, the Panel orders that the disputed domain name be transferred to Hugo Boss AG.
Debrett G. Lyons
Sole Panelist
Date: April 12, 2015
1 See discussion which follows under the heading, Preliminary Procedural Issue.
2 Panel also notes in passing Chinese national trade mark registration No. 949338 for HUGO BOSS in class 25 but observes that the Respondent’s given address (3796 N Yosemite Str., 21267 Parkville, Province: Afghanistan, China) is so obviously fabricated that this additional registration is of little or no relevance to the decision.
3 Found at
4 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
5 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
6 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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