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 Zhou Yifan of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (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 October 8, 2015. On October 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2015.
The Center appointed Nicholas Weston as the sole panelist in this matter on November 10, 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.
The language of the proceeding is English, being the language of the registration agreement. 4. Factual Background
The Complainants operate a business headquartered in Germany selling fashion goods and accessories worldwide. The Complainants hold registrations for the HUGO BOSS trademark and variations of it in numerous jurisdictions including the United States of America, Europe, and China, which they use to designate a comprehensive range of fashion products. The International Trademark Registration has been in effect since 1977. Approximate global revenue for sales of HUGO BOSS products in 2013 was EUR 2.4 billion.
The Complainants conduct business on the Internet using numerous domain names containing the words “Hugo Boss” including , with an online retail website resolving from that domain name.
The Respondent registered the Disputed Domain Name on November 18, 2014 which resolves to a web page containing advertisements and links in connection with HUGO BOSS brand apparel. 5. Parties’ Contentions A. Complainants
The Complainants cite their trademark registrations for HUGO BOSS in various countries as prima facie evidence of ownership.
The Complainants submit that the mark HUGO BOSS is well-known (citing Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin/Personal, Loung Dinh Dung,WIPO Case No. D2011-0564). The Complainants submit that their rights in that mark predate the Respondent’s registration of the Disputed Domain Name . They submit that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the HUGO BOSS trademark and that the similarity is not removed by the addition of the generic Top-Level Domain (gTLD).
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainants’ trademark (presumably alluding to Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). The Complainants also contend that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services.
Finally, the Complainants allege that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by registering and using the Complainants’ HUGO BOSS mark in the Disputed Domain Name, “it is obvious that the domain name has been registered to create confusion and mislead the Internet user into believing that the Complainants and the Respondent are affiliated or endorse the website which the Respondent’s domain name resolves to”. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have produced sufficient evidence to demonstrate that they have registered trademark rights in the mark HUGO BOSS in numerous countries throughout the world. The Panel finds that the Complainants have rights in the mark HUGO BOSS in the Respondent’s relevant jurisdiction, China, pursuant to International Trademark Registration No. 513257 registered from April 10, 1987. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainants have rights in the mark HUGO BOSS.
The Panel also finds that the mark HUGO BOSS is well-known. See for example: HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Hashem Khatib,WIPO Case No. D2015-1338 (“It is settled that HUGO BOSS has been considered internationally well-known based on the fact that HUGO BOSS was founded 90 years ago and its fame, reputation and goodwill in the fashion industry as well as a manufacturer of a comprehensive product range encompassing shoes”); HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Hao Li,WIPO Case No. D2015-1213 (“The Domain Name contains Complainants’ well-known HUGO BOSS trademark”).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the HUGO BOSS trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainants’ trademark (b) conjoined with the descriptive word “store” (c) conjoined with a dash followed by the descriptive word “outlet” (d) followed by the gTLD “.com”.
It is well established that the top level designation used as part of a domain name should typically be disregarded (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: .
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of descriptive words (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
The Panel finds that the additional elements, specifically the descriptive words “store” and “outlet”, after the Complainants’ registered trademark, dash or no dash, simply describe activities engaged in by the Complainants. This Panel finds that the Disputed Domain Name is confusingly similar to the HUGO BOSS mark used by the Complainants (see HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Hao Li, supra: “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”).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainants’ mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the HUGO BOSS trademark.
Accordingly, the Panel finds that the Complainants have established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of ways that a respondent may demonstrate rights or a legitimate interest in a disputed domain name:
(i) before any notice of the dispute, 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 it 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 Policy places the burden on complainants to establish the absence of a respondent’s rights or legitimate interests in a disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view of UDRP panels is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
However, the Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a web page advertising or offering for sale products in connection and competition with the Complainants’ mark and thereby illegitimately exploiting the “fame, goodwill and notoriety” of the Complainants’ trademark. The Complainants also have not licensed, permitted or authorized the Respondent to use the Complainants’ trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainants’ well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page.
The Panel finds for the Complainants on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainants must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), 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, (relevantly):
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.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances in which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainants’ contention that the Respondent registered and is using the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The trademark HUGO BOSS is so well-known in China for fashion apparel that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, a significant gap between the registration of a complainant’s trademark and the respondent’s registration of the disputed domain name (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainants held a direct China registration for the trademark HUGO BOSS, China Registration No. 1960721 from 2002, predating the Respondent’s registration by over 12 years.
A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a web page containing links and advertisements that directly compete with the offerings to be found on the web site operated by the Complainants.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondent’s use of the Disputed Domain Name is apparently unconnected with any bona fide supply of goods or services by the Respondent. The diversion of Internet traffic arising from the Complainants’ goodwill is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Lilly ICOS LLC v The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra).
The Panel finds that the Respondent has taken the Complainants’ trademark HUGO BOSS and incorporated it in the Disputed Domain Name without the Complainants’ consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a webpage for commercial gain.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) 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.
Nicholas Weston
Sole Panelist
Date: November 19, 2015
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