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 Boss Co., Limited of Hong Kong, China, represented by Rebecca Lo & Co, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain names and (the "Domain Names") are registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2015. On October 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 30, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2015. The Response was filed with the Center on November 20, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on December 3, 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 Hugo Boss Group which was founded in 1924. The Group is one of the market leaders in the luxury segment of the global apparel market. It is headquartered in Metzingen, employs almost 13,000 employees and generated net sales of EUR 2.6 billion in 2014. The First Complainant owns the trade marks HUGO BOSS and BOSS. The trade marks are used in connection with apparel, shoes, leather accessories, fragrances, eyewear, watches, home textiles and mobile accessories. The First Complainant has global trade mark registrations for the trade marks HUGO BOSS and BOSS. The following are the trade mark registrations which have been relied on in the Complaint:
- International Trade Mark Registration No. 456092 BOSS registered on October 9, 1980 in Class 25 and designating 60 countries.
- International Trade Mark Registration No. 423213 BOSS registered on May 24, 1976 in Class 28 and designating 19 countries.
- International Trade Mark Registration No. 773035 BOSS registered on August 16, 2001 in Classes 9, 14, 18, 24, 25, 28 and 34 designating a number of countries including China.
- Community Trade Mark Registration No. 1798099 BOSS registered on September 24, 2001 in Class 25, 28 and 41.
- Community Trade Mark Registration No. 23420378 BOSS registered on January 9, 2006 in Classes 23, 24 and 26.
- Community Trade Mark Registration No. 49221 BOSS registered on January 29, 2009 in Classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 34, 35 and 42.
- United States Trade Mark Registration No 1023305 BOSS registered on October 21, 1975 in Class 25.
- United States Trade Mark Registration No 2927139 BOSS registered on February 22, 2005 in Class 25.
The Second Complainant owns and operates domain names and websites incorporating the HUGO BOSS and BOSS trade marks including , , , and . Unless otherwise stated, both Complainants will be referred to as the Complainant.
The Respondent, a watch manufacturer and a member of the Hong Kong Watch Manufacturers Association was incorporated on February 21, 2003 in Hong Kong, China. It registered the Domain Names, on March 21, 2005 and on November 11, 2001.
The Respondent owns the following trade mark registrations:
- Hong Kong Trade Mark Registration No. 19811301 BOSS registered on October 18, 1980 in Class 14.
- Hong Kong Trade Mark Registration No. 1992B02840 BOSS & Logo registered on August 8, 1988 in Class 14.
- Hong Kong Trade Mark Registration No. 1992B04221 BOSS & Logo registered on January 9, 1990 in Class 14.
The Domain Names are connected to active websites (the "Websites") which feature watches bearing the brand BOSS. The Websites also bear the name BOSS.
The Complainant applied to revoke the Respondent's trade mark registrations and the Registrar of Trade Marks of Hong Kong dismissed these proceedings on June 1, 2015. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Name should be transferred. Identical or Confusingly Similar
The Domain Names are identical to the Complainant's BOSS trade mark. The addition of the generic words "watch" and "world" do not influence the global impression provided by the Domain Names. Rights or Legitimate Interests
- The Complainant has not licensed or otherwise authorized the Respondent to use the BOSS trade mark or apply for any domain name incorporating the trade mark.
- The Respondent is not making legitimate noncommercial or fair use of the Domain Names as they are connected to active websites where users are redirected to two different links.
- The Respondent's company name was chosen to create confusion with the Complainant when it was incorporated on February 21, 2003. Its previous name was Boss Watches and Jewels Limited.
- The Respondent's BOSS trade mark was registered on October 19, 1980 by Boss Watches and Jewels Limited. It was assigned to the Respondent on March 3, 2003.
- Given the number of BOSS and HUGO Boss trade marks owned by the Complainant, there is no circumstances under which the Respondent could legitimately use the Domain Names.
- The Respondent has no exclusive or any other rights to the Domain Name.
- The Respondent is not normally known by that name. Registration and Use in Bad Faith
- The Complainant's mark HUGO BOSS is well known and the Respondent must have had knowledge of the Complainant's rights when it registered the Domain Names.
- There is no bona fide offering of goods or services on the Websites as they ask visitors to choose their country and have hyperlinks to the webpages and .
- The websites connected to the hyperlinks feature watch models that are very similar to the watches that are sold on the Complainant's official websites.
- These watches also bear the trade mark BOSS written in a font which is identical/similar to the font used by the Complainant for its BOSS trade mark clearly showing an intention to mislead Internet users and to try to hide that the Respondent is selling products under the Complainant's trade mark.
- The Domain Names have been registered to create confusion and mislead Internet users into believing that the Complainant and the Respondent are affiliated or that the Complainant endorses the Websites.
- The Complainant has been a target of third parties who register domain names which comprise its trade marks and has been successful at recovering these domain names under the UDRP. B. Respondent
The Respondent denies that the Domain Names should be transferred to the Complainant for the following reasons: Identical or Confusingly Similar
- The Respondent owns trade mark registrations for BOSS in Hong Kong, China. The Respondent's predecessors in title have been using the BOSS trade mark in Hong Kong, China and China in relation to watches and jewelry since the 1970s. BOSS products were also exported to various other countries including Singapore, Japan and Canada. The Respondent's business started in the 1970s with Mr. Liu Yuk Ming, a shareholder and director of the Respondent, carrying on business under the name "The Sun International Trading Co" and using the brand BOSS on his watch products. Hong Kong Trade Mark Registration No 19811301 for the BOSS word mark was registered in 1980 in Class 14 under the name Liu Yuk Ming trading as The Sun International Trading Co. In October 1986, Mr. Liu formed the company Boss Watch & Jewels Ltd. The trade marks were assigned to the Respondent on March 3, 2003 after its incorporation on February 21, 2003.
- The word "boss" is not an invented word. It is a common English word referring to a person at the top of an organization.
- The mark BOSS and the Chinese version "波士" were adopted by the Respondent some 40 years ago. At that time he was not aware of the existence of the marks HUGO BOSS and BOSS HUGO BOSS nor its alleged reputation in the mark BOSS.
- The word "boss" was incorporated as part of the Domain Names as it has been the Respondent's trade mark and corporate name for decades.
- It is disputed that the Complainant's HUGO BOSS and BOSS marks are internationally well known in relation to watches or similar products as it has not adduced evidence to prove that. The UDRP case that the Complainant relies on in connection with findings by panels that the marks are internationally well known was not a contested case and it is not clear from the decision how the panel arrived to that conclusion.
- The corporate history that was submitted in evidence by the Complainant shows that the Complainant did not start using its marks on watches until 1996 when it was granted its first watch licence.
It is disputed that the Complainant enjoys an international reputation over the mark BOSS on its own as the evidence submitted shows that the Complainant always uses the mark BOSS in the context of HUGO BOSS or BOSS HUGO BOSS.
- Even if it did enjoy such reputation, which is denied, the reputation is confined to clothing. The Complainant's first registration of the mark BOSS in Class 14 was in August 2001 which is 10 years later than the Respondent's Hong Kong Trade Mark Registration No. 19811301.
- The Domain Names are not identical or confusingly similar to the trade mark HUGO BOSS.
- There are other businesses that have adopted BOSS as their trade marks for their respective products e.g., Boss Corporation, maker of guitar accessories and audio equipment at "" and Boss Audio maker of car and marine audio and video systems at "".
-The Complainant has not provided any justification in the delay in bringing these proceedings in respect of Domain Names that have been registered and used by the Respondent for over 10 years. They should be estopped from obtaining relief under these proceedings. The inordinate delay show that the Complainant never really believed that the Respondent had no rights or legitimate interests in respect of the Domain Names or that registration of the Domain Names was done in bad faith. Rights or Legitimate Interests
- The Respondent and its predecessors in business have been using the BOSS trade mark in relation to their watch products in Hong Kong, China and China since the 1970s, which predates the Complainant's use of the mark BOSS HUGO BOSS in respect of watches through a licence.
- The Respondent has trade mark registrations for BOSS and BOSS & Logo in Hong Kong, China and China in Class 14.
- The Respondent and its predecessor in business has been using the word BOSS as part of their corporate name since the formation of Boss Watch & Jewels Ltd in 1986.
- The Complainant's applications for revocation of the Respondent's BOSS trade mark registrations in Hong Kong, China were dismissed.
- The Respondent's registration and use of the Domain Names for over 10 years without complaint from the Complainant is evidence that it does not in fact believe that the Respondent has no rights or legitimate interests. Registration and Use in Bad Faith
- The Respondent has good reason to register and use the Domain Names in the course of its business. It has concurrent rights and legitimate interests to the BOSS name as it owns trade mark registrations which comprise BOSS and the word "boss" has also been part of its corporate name and that of its predecessors in business for 40 years.
- There is a bona fide offering of goods or services on the Websites. Both are connected to the Respondent's corporate websites at and which include the Respondent's online catalogues.
- The website at allows buyers to place orders online while the website at provides information about the sales channels of the Respondent's watches in mainland China.
- It is common practice for traders to register a number of domain names and instead of operating a separate website for each domain name, have them hyperlinked to its main corporate website. The Complainant has the same practice, , and are all linked to .
- The allegation that the watches on the Respondent's websites are "really similar" to those shown on the Complainant's website and that such similarity shows an intention to mislead Internet users is refuted especially as the Complainant has not specified which models of both parties it is actually referring when making the comparison. Neither has it produced any evidence that the Complainant has exclusive rights to any of the designs.
- The font used for the mark BOSS on the Respondent's watches is the standard font of Times New Roman in bold type which the Respondent has used for decades, well before the Complainant commenced its watch licence in 1996.
- The inordinate delay of over 10 years in filing the Complaint shows that the Complainant never believed that the registration of the Domain Names was in bad faith.
- The four cases cited by the Complainant as evidence that it has been a target of third party misuse of its trade marks in their domain names and the successful recovery of these domain names using the UDRP are irrelevant as all the domain names are in respect of the mark HUGO BOSS instead of BOSS. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following three elements, namely that:
(i) The Domain Names are 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 Domain Names; and
(iii) The Domain Names have been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Panel is satisfied from the evidence submitted that the Complainant has rights in the registered trade mark BOSS.
The threshold test for identity or confusing similarity under the Policy involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case, the Domain Names comprise the Complainant's trade mark BOSS and the generic words "watch" and "world". For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain domain suffix. Likewise, the content of Respondent's website is also disregarded.
The word's "watch" and "world" do not negate the identity or confusing similarity caused by the Respondent's use of the trade mark BOSS in the Domain Names. The Domain Names are confusingly similar to the Complainant's BOSS trade mark.
The Complainant has established this element of its case. C. Rights or Legitimate Interests
In relation to the second element of the UDRP, whilst the overall burden of proof rests with the Complainant, it is recognized that this could result in the impossible task of proving a negative. Hence, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent. The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the name BOSS. In the Response, the Respondent contends otherwise, relying on the first two of the three illustrative circumstances as examples below which, if established by the Respondent, demonstrate rights to or legitimate interests in the Domain Names for the 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 Respondent has provided evidence that its predecessors in title have been selling watches under the trade mark BOSS since the 1970s. The evidence submitted included old invoices as well as letters from companies inquiring about the products. The earliest invoice written in Chinese makes reference to the Chinese version of the mark "波士" which is a transliteration of the word BOSS. Invoices dating back to 1991 make reference to the watches as "Boss Qwarty Watch".
The Respondent's predecessors in title incorporated the company Boss Watch & Jewels Ltd in Hong Kong, China in 1983. There are copies of invoices from this company after this date evidencing sales of BOSS watches. The Respondent was incorporated as Boss Co Limited in 2003 and has continued selling BOSS watches as evidenced by the sample invoices. Throughout the period since at least 1990, the Respondent and its predecessors in title have received queries regarding their products from traders and suppliers from many different countries including the United Kingdom of Great Britain and Northern Ireland, Thailand, Taiwan, Province of China, China, South Africa and Japan. There does not appear to be any mention of BOSS watches in these letters. The inquiries were in relation to watches directed to Boss Watch & Jewels Ltd and Boss Co Limited, both corporate names with the word BOSS as their most dominant and distinctive feature.
The Respondent also owns trade mark registrations in Hong Kong, China for the trade mark BOSS and BOSS & Logo in class 14. In the Response, the Respondent states that is has registered trade marks in Hong Kong, China and China. No details have been provided of trade mark registrations in China. The earliest trade mark was registered on October 18, 1980 in the name of Boss Watch and Jewels Limited. The marks were assigned to the Respondent on March 3, 2003. The Complainant attempted to revoke these registrations at the Hong Kong Trade Mark Registry but failed on June 1, 2015. The Complainant's earliest trade mark registration for BOSS in Class 14 under International Trade Mark Registration No 773035 is dated August 16, 2001 and the date of first use of BOSS/HUGO BOSS on watches is 1996 as stated in the corporate history document submitted in evidence. The Respondent's trade mark registrations therefore pre-date the Complainant's trade mark registrations and use of the BOSS mark in relation to watches. The Complainant has not provided any evidence to disprove this.
It is not clear what the Complainant's case is in relation to the ownership of the BOSS trade mark registrations by the Respondent. Whilst it has not has not made any submissions as to the legitimacy of the trade marks relied on by the Respondent, it appears to disregard the BOSS word mark registration as failing to give the Respondent any legitimate rights or interests. The mere fact that a trade mark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. A respondent's trade mark registrations may be disregarded by a panel if it has not been sought or obtained for a legitimate or bona fide purpose but merely to bolster an otherwise abusive domain name registration (Beca Inc. v. CanAm Health Surce, Inc.WIPO Case No. D2004-0298). This is clearly not such a case here as demonstrated by the history and chronology of events.
The Respondent has submitted that the Complainant should be estopped from obtaining relief under these proceedings because of the delay of over 10 years since the registration and use of the Domain Names. The Complainant has not provided any explanation for the delay.
The consensus view under paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") says this:
"Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant."
The Panel agrees that it is unnecessary to consider the doctrine of laches or estoppel here. The fact is the delay in bringing a complaint under the UDRP has meant that both companies have concurrently been trading in watches bearing their respective BOSS trade marks for a substantial period of time and the Respondent through the Domain Names for at least 10 years. No evidence of confusion or deception on the part of the public has been submitted to bolster any argument of lack of rights or legitimate interest under the UDRP.
Having regard to (i) the evidence that the Respondent and its predecessors in title were selling BOSS branded watches since the 1970s in Hong Kong, China and other countries; (ii) the Respondent and its predecessor in title having been trading under corporate names which incorporate BOSS as their most dominant feature since at least 1983; (iii) the descriptive and laudatory nature of the word BOSS; (iii) the creator of the Respondent's BOSS trade mark not being aware of the Complainant's HUGO BOSS or BOSS HUGO BOSS or BOSS trade marks at the time of its creation; (iii) the Respondent's BOSS trade mark registrations in Hong Kong, China and the Complainant's failure to successfully revoke them; and (iv) the Respondent's registration and use of the Domain Names for the past 10 years, trading concurrently with the Complainant without any apparent confusion, the Panel is not satisfied that the Respondent lacks rights or legitimate interest in respect of the Domain Names. D. Registered and Used in Bad Faith
In light of the Panel's conclusion in relation to the second element, there is no reason to consider the parties' allegations concerning bad faith. The Panel is not satisfied that the Respondent's adoption and use of the Domain Names amount to cybersquatting which the Policy is directed at. If there is to be any finding that the use of the BOSS trade mark by the Respondent amounts to trade mark infringement or passing off, that is beyond the scope of the Policy and the Complainant needs to seek recourse to the courts. 7. Decision
For the foregoing reasons, the Complaint is denied.
Karen Fong
Sole Panelist
Date: December 17, 2015
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