The Complainant is HUGO BOSS Trade Mark Management GmbH & Co. KG of Metzingen, Germany, represented by Taylor Wessing, Germany.
The Respondent is Guanjing, daziran of Tianjin, China. 2. The Domain Names and Registrar
The disputed domain names , , and (the “Disputed Domain Names”) are registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2015. On May 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 29, 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.
On June 1, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on June 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2015.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 2, 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 Complainant is the wholly owned subsidiary of Hugo Boss AG, a German fashion company. The Complainant manages the worldwide trademark portfolio of Hugo Boss AG. The Complainant has produced registration information of several trademarks, inter alia: HUGO BOSS, International trademark, Registration No. 754225, registered on February 8, 2001; HUGO HUGO BOSS, International trademark, Registration No. 604811, registered on July 20, 1993. Both trademarks mentioned above are protected in China through International Trademark registration.
According to the WhoIs data and the Registrar’s verification response, the Respondent is Guanjing, daziran. The Disputed Domain Names registered by the Respondent are as follows:
: registered on October 30, 2014; valid until October 30, 2015.
: registered on October 30, 2014; valid until October 30, 2015.
: registered on January 16, 2015; valid until January 16, 2016.
: registered on October 30, 2014; valid until October 30, 2015.
The Registrar confirmed, in its email of May 29, 2015, that the Registration Agreement for each Disputed Domain Name is in Chinese. 5. Parties’ Contentions A. Complainant
The Complainant requests the Disputed Domain Names be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of numerous HUGO BOSS and HUGO HUGO BOSS trademarks, which are well-known worldwide. The Disputed Domain Names, , , and are confusingly similar and nearly identical to the Complainant’s HUGO BOSS trademark since they reproduce the HUGO BOSS trademark in its entirety and merely add the English terms such as “outlet”, “sale”, “on sale” and “online mall”, which do not cause the Disputed Domain Names to be distinguishable from the Complainant’s trademarks. Moreover, the Respondent also uses the Complainant’s contact information to make a false declaration on the websites to which the Disputed Domain Names resolve, which increases the likelihood of confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant has never given authorization or permission to the Respondent to register or to use its HUGO BOSS trademark. The Respondent is not in any way related to the Complainant’s business, is not one of its distributors and the Respondent does not carry out any activity for the Complainant nor does it have any business with it. The absence of legitimate interest is evidenced by the fact that the Respondent uses the Disputed Domain Names to resolve to websites that sell counterfeit Hugo Boss products and copy a wide range of the Complainant’s United States of America website without the Complainant’s consent or authority. The Respondent does not use the Disputed Domain Names in connection with a bona fide offer of goods or services.
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Complainant’s HUGO BOSS trademarks were registered long before registration of the Disputed Doman Names and therefore the Respondent could not be unaware of the existence of the Complainant’s earlier rights. The Disputed Domain Names, which are highly similar to the famous HUGO BOSS trademarks, were registered and are being used in bad faith with the purpose to disrupt the business of the Complainant’s company and to mislead possible consumers for the Respondent’s commercial gain from selling counterfeit Hugo Boss products to consumers. The Disputed Domain Names were therefore registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issues A. Complaint against multiple Disputed Domain Names
Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
The Complainant filed the Complaint against several Disputed Domain Names. Hence, the Panel has to review the facts and determine whether filing of the Complaint complies with the Policy and the Rules.
The Disputed Domain Names, , , and are all registered by the same domain-name holder. Therefore, the Panel finds that the Complaint against the four Disputed Domain Names is in compliance with the Policy and the Rules and will include all four Disputed Domain Names in the same proceeding. B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless 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 Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The registration agreement is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests the language of the proceeding should be English. For the following reasons, the Panel decides that the language of the proceeding shall be English.
(1) The websites the Disputed Domain Names resolve to contain English, which suggests that the websites are designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee,WIPO Case No. D2013-1103).
(2) The Panel finds that the Complainant is not in a position to conduct this proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(3) The Center’s communication to the Respondent uses both English and Chinese and has given the Respondent an opportunity to object to the Complainant’s request. The Respondent did not reply to the Center. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”.
The Complainant has established that it is the owner of the HUGO BOSS trademark as well as HUGO HUGO BOSS trademark.
The Disputed Domain Names, , , and , incorporate the HUGO BOSS trademark in its entirety, with the addition of English terms “outlet”, “sale”, “on sale”, “online mall”, hyphens, and the generic Top-Level Domains (gTLDs) “.com” as well as “.net”. The addition of English terms such as “outlet”, “on sale”, “online mall” and “sale”, hyphens and the gTLDs “.com” and “.net” cannot distinguish the Disputed Domain Names from the Complainant’s HUGO BOSS trademark. The only distinctive part of the Disputed Domain Names is “hugo boss”, which is identical to the Complainant’s trademark. Furthermore, the addition of English terms “outlet”, “sale”, “on sale” and “online mall” does not mitigate the likelihood of confusion and could, in fact, strengthen Internet user’s confusion with the Complainant’s business under the brand Hugo Boss.
According to the above, the panel concludes that the Disputed Domain Names are confusingly similar to the Complainant’s HUGO BOSS trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”.
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [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.”
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: “[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established that it is the owner of the HUGO BOSS trademark as well as the HUGO HUGO BOSS trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the Complainant’s trademark.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondent did not submit any allegation or evidence from the Respondent indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy. The Respondent did not allege nor provide evidence to establish that it is a legally authorized reseller of the Complainant. The Respondent does not accurately and prominently disclose its relationship with the Complainant. Therefore, the Respondent cannot claim that it has rights or legitimate interests in the Disputed Domain Names as a reseller of the Complainant’s products.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Names have any connection with the Respondent’s name or the Respondent is commonly known by the Disputed Domain Names. The Disputed Domain Names are used to sell the Respondent’s products, which is a commercial use.
Therefore, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.
The Complainant’s HUGO BOSS trademark and HUGO HUGO BOSS trademark have been registered in many countries in the world, including China. The Respondent chose the HUGO BOSS trademark as the only distinctive part of the Disputed Domain Names. No allegation or evidence suggests that the Respondent selected “hugo boss” as used in the Disputed Domain Names for any reason other than the reputation of the trademark. The screenshots of the websites the Disputed Domain Names resolve to shows that the Respondent is aware of the Complainant’s trademark. Such intentional registration shows the bad faith of the Respondent. Thus, the Panel concludes that the Disputed Domain Names were registered in bad faith.
Moreover, the Respondent uses the HUGO BOSS trademark on the websites to which the Disputed Domain Names resolve. The screenshots of the websites indicate that the websites sell clothing and accessories which are also sold under the Complainant’s HUGO BOSS trademark. According to the evidence submitted by the Complainant, the websites to which the Disputed Domain Names resolve reproduce the Complainant’s contact information in the “About US” section of the Complainant’s official website. On the top left-hand side of the home page of the websites, the Respondent uses the BOSS mark. The Respondent also extensively displays the term “Hugo Boss” in the websites under the Disputed Domain Names. These features make the websites under the Disputed Domain Names appear to be official websites of the Complainant or sponsored or endorsed by the Complainant.
The condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 8. 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 Names, , , and , be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: July 16, 2015
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