Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG, both of Metzingen, Germany (collectively, “Complainants”), represented by Dennemeyer & Associates S.A., Germany.
Respondent is Hao Li of Hanansheng, China. 2. The Domain Name and Registrar
The disputed domain name (the “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 July 14, 2015. On July 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 15, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on July 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on August 10, 2015.
The Center appointed John C. McElwaine as the sole panelist in this matter on August 21, 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
Complainants herein are collectively HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG. Complainant HUGO BOSS Trade Mark Management GmbH & Co. KG is the owner of the trademark HUGO BOSS registered and used for various goods and services including in Europe, United States of America and China. Complainant HUGO BOSS AG owns and operates websites at numerous domain names incorporating the HUGO BOSS trademark, including , and .
On April 20, 2015, Respondent registered the Domain Name through the Registrar. The Domain Name links to a website operating under the designation “HUGO BOSS” and purports to sell Hugo Boss branded products. 5. Parties’ Contentions A. Complainants
Complainants assert that 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 HUGO BOSS Group focuses on the development and marketing of premium fashion and accessories for men and women. Headquartered in Metzingen, Germany the company generated net sales of EUR 2.4 billion in fiscal year 2013, making it one of the most profitable apparel manufacturers in the world.
Complainants’ website indicates that Hugo Boss customers can buy products at approximately 7,100 points of sale worldwide. Of these outlets, 6,100 are operated by wholesale partners, that is department stores and, often, family-run specialist stores as well as franchise partners. Online retail sales are gaining importance and Complainant, HUGO BOSS AG, operates online stores in Germany, the United Kingdom of Great Britain and Northern Ireland, France, Spain, Italy, the Netherlands, Belgium, Austria, Switzerland, the United States of America and China.
Complainant, HUGO BOSS Trade Mark Management GmbH & Co. KG, provided evidence that it owns hundreds of trademarks for the mark HUGO BOSS throughout the world in International Classes 3, 9, 14, 18 and 25, including the following registrations:
- HUGO BOSS - Community Trademark No. 000049254 in classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 35 and 42
- HUGO BOSS - Community Trademark No. 006645204 in class 16
- Hugo Boss - International Trademark Registration No. 430400 designating more than 40 countries in classes 18, 24 and 25
- HUGO BOSS - International Trademark Registration No. 513257 designating more than 35 countries in classes 9, 14, 16, 18, 25, 28 and 34
- HUGO BOSS - International Trademark Registration No. 637658 designating China in classes 29, 30, 31, 32 and 33
- HUGO BOSS - Trademark Registration No. 9277541 in China in class 24
- HUGO BOSS - Trademark Registration No. 1960721 in China in Class 35
- HUGO BOSS - Trademark Registration No. 949338 in China in Class 25
- HUGO BOSS - Trademark Registration No. 253481 in China in Class 25
- HUGO BOSS - Trademark Registration No. 1991B0042 in Hong Kong, China in Class 25
Addressing the first element of the Policy, Complainants assert that the Domain Name is confusingly similar to Complainants’ HUGO BOSS trademark, which has been found to be internationally well-known in previous UDRP decisions. Complainants further allege that the use of the descriptive terms “outlet”, “store” and “shop” in the Domain Name does not detract from the overall impression. Likewise, the generic Top-Level Domain (“gTLD”) “.com” does nothing to distinguish the Domain Name. As a result, Complainants assert that the Domain Name is confusingly similar to their registered, famous HUGO BOSS mark.
With respect to the second element of the Policy, Complainants assert Complainants have not licensed or otherwise authorized Respondent to use the HUGO BOSS trademark or to use such mark in connection with the registration of any domain name. Complainants assert that given the shear number of trademark registrations they own throughout the world and Complainants’ fame and notoriety, that there is no imaginable set of circumstances under which Respondent could legitimately use the Domain Name.
With respect to the third element of the Policy, Complainants claim that the HUGO BOSS trademark is well-known and that given the nature of the website connected to the Domain Name, it is clear that Respondent knew of Complainants’ legal rights at the time of the registration of the Domain Name. Complainants further allege that the Domain Name was registered to create confusion and mislead the Internet user into believing that Complainants and Respondent are affiliated. As evidence, Complainants point to the lack of terms of use or other clear indicators of a third-party source of Respondent’s website.
Complainants provided a comparison of Complainant’s website located at “www.” to Respondent’s website located at the Domain Name to establish that Respondent has created or imitated the look and feel of Complainants’ original website. Complainants assert that this is an attempt to mislead consumers and attract, for commercial gain, Internet users who could think Respondent’s website is managed by Complainants. Complainants further assert that Respondent is not authorized to sell Complainants’ products and that the website displayed at the Domain Name gives the false impression of an official website related to Complainants.
In light of the foregoing, Complainants contend that Respondent should be considered to have registered and is using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainants must still prove their assertions with actual evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainants to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights. The Panel finds that Complainants own trademark rights in the HUGO BOSS trademark, which predate the registration of the Domain Name, including in China where Respondent claims to reside.
The Domain Name contains Complainants’ well-known HUGO BOSS trademark in its entirety, as a dominant element. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. The terms “outlet”, “store” and “shop” are all related to Complainants’ core business. Thus, the public is likely to believe that “www.” is related to a website from which Complainants’ branded fashion products can be purchased. The Panel finds that the addition of the descriptive words “outlet”, “store” and “shop” do not serve to sufficiently distinguish or differentiate the Domain Name from Complainants’ HUGO BOSS trademark.
Also, the addition of the gTLD “.com” to the Domain Name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the Domain Name and it does not serve to identify the source of the goods or services provided by the registrant of the Domain Name.
The Panel finds that Complainants have met their burden of showing that the Domain Name is confusingly similar to the HUGO BOSS mark in which Complainants have valid trademark rights. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainants have the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. However, because the nature of the respondent’s rights or interests, if any, in a domain name lies most directly within the respondent’s own knowledge, the consensus view is that a complainant need only make a prima facie case on this element. See Education Testing Service v. TOEFL,WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703. The burden of production shifts then to the respondent to present evidence that it has some rights or legitimate interests in the domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1); seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
In this case, Complainants have made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. In particular, Complainants have not licensed or provided other authorization for Respondent to use the HUGO BOSS trademark. Complainants are the only legitimate holder of rights in the name HUGO BOSS, and Respondent has come forward with no evidence that it has a corporate name or other designation that coincides with the Domain Name.
However, under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Although Respondent did not file a response, Complainants establish that Respondent has been using the Domain Name in connection with a website that purports to sell Complainants’ HUGO BOSS branded products. If this use amounted to a bona fide offering of services pre-dating notice to Respondent of the dispute, then Complainants will fail under the second element of the Policy.
To address the issue of bona fide use, the Panel finds that the requirements set forth in Oki Data America, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) to be the appropriate analysis for this case. Oki Data instructs that to be considered bona fide use, the offering must meet several requirements, including the following:
- Respondent must actually be offering the goods or services at issue;
- Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- Respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e., it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent; and
- Respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.
In this case, there is no evidence that Respondent is offering products of other third-parties from the website located at the Domain Name. Likewise, there is no allegation that Respondent has cornered the market on all HUGO BOSS-related domain names. With respect to Respondent actually offering HUGO BOSS brand products, Complainants allege only that Respondent is not authorized to sell HUGO BOSS brand products. No proof has been offered that the goods for sale by Respondent were not, in fact, legitimate HUGO BOSS branded products. The allegations set forth by Complainants are insufficient for the Panel to find that Respondent was not actually offering the goods at issue.
However, Respondent has not taken steps to prevent confusion by making clear in its use of the Domain Name that it is not the trademark owner. In fact, Respondent has created a website that is likely to cause confusion. In particular, the website at the Domain Name prominently displays a large version of the HUGO BOSS logo, along with images of models and Hugo Boss products. A comparison of the look and feel of Respondent’s website located at the Domain Name to Complainants’ website establishes that the websites are substantially similar. Moreover, there is no disclaimer on Respondent’s website. In fact, other than the prominent multiple uses of HUGO BOSS trademarks, there is no indicator of source of Respondent’s website on the home page. The website even contains a copyright notice indicating “Hugo Boss Outlet © 2015”. Such use cannot be deemed bona fide under the Policy.
Accordingly, Complainants have made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainants have met their burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainants must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with 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. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107.
Complainants have used the HUGO BOSS mark for decades and have registered the mark in multiple jurisdictions throughout the world, including in China, where Respondent resides. The Panel finds that Complainants’ mark HUGO BOSS is well-known on an international basis. There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (“the Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Based on Complainants’ submissions, which were not rebutted by Respondent, it is clear that Respondent knew of Complainants’ HUGO BOSS mark at the time of registration of the Domain Name, and therefore Respondent registered the Domain name in bad faith.
Further, the Domain Name is currently being used to operate an online retail store offering alleged HUGO BOSS branded products for sale. Complainants render the same type of online retail store services. Without the authorization of Complainants, Respondent has created a substantially similar website to Complainants’ website and has used the HUGO BOSS trademark prominently displayed on the website located at the Domain Name. By using these elements for directly competing retail services and to sell purported Complainants’ products, Respondent is diverting, for commercial gain, Internet users to its website, and is doing so in a manner likely to cause consumers to believe that the Domain Name is somehow associated with, affiliated with, and/or endorsed by Complainants.
For this reason, the Panel holds that Complainants have met their burden of showing that Respondent registered and is using the Domain Name in bad faith. 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 Domain Name be transferred to Complainants.
John C McElwaine
Sole Panelist
Date: September 3, 2015
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