Complainant is HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
Respondent is Crece Feirons of Pine Valley, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2015. On November 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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. Complainant filed an amended Complaint on November 18, 2015.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on November 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 10, 2015.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 17, 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
Complainant is headquartered in Metzingen, Germany. It was founded in 1924 and acts in the premium and luxury segment of the global apparel market. Complainant owns numerous registrations for HUGO BOSS trademarks all around the world. These registrations cover, amongst others, goods in classes 3, 9, 14, 18 and 25 of the 10th International Nice Classification, as shown in Annex 3 to the Complaint.
Community Trademark HUGO BOSS no. 000049254 in classes 3, 9, 10, 12, 14, 15, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 35, 42 registered in March 26, 2008; Community Trademark HUGO BOSS no. 006645204 in class 16 registered in November 26, 2012; International Trademark Registration HUGO BOSS no. 430400 designating more than 40 countries in classes 18, 24 and 25 registered in June 03, 1977; International Trademark Registration HUGO BOSS no. 513257 designating more than 35 countries in classes 9, 14, 16, 18, 25, 28, 34; and International Trademark Registration HUGO BOSS no. 637658 designating several countries in 29, 30, 31, 32 and 33, all as shown in Annex 4 to the Complaint.
Furthermore, Complainant owns and operates websites and numerous domain names incorporating the HUGO BOSS and BOSS trademarks, including but not limited to , , , and as shown in Annex 5 to the Complaint.
The disputed domain name was registered by Respondent in October 20, 2015, as per Annex 1 to the Complaint. Currently there is no active website connected to the disputed domain name. 5. Parties' Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to its registered trademarks, and that the generic Top-Level Domain ".net" does not give the disputed domain name significant distinctiveness, as decided in previous UDRP panel decisions mentioned by Complainant: Magnun Piering Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
In addition, Complainant claims that the most dominant part of the disputed domain name makes use of Complainant's registered trademarks HUGO BOSS with the mere addition of "UK" and "tshirts", which Complainant finds to be purely descriptive. According to Complainant, "UK" refers to the United Kingdom of Great Britain and Northern Ireland as to indicate the origin of the product; and "tshirts" is a reference to "t-shirts", the kind of clothing sold by both Complainant and Respondent.
Complainant further adds that Complainant's HUGO BOSS trademarks have been considered internationally well-known in prior URDP cases.
Complainant claims that Respondent has no rights or legitimate interests in respect of the disputed domain name, as Respondents active in the same industry as Complainant and was aware of the existence of Complainant's companies, one of the most profitable listed apparel manufacturers in the world.
Moreover, Complainant holds that Respondent cannot be commonly known by the disputed domain name, as it does not coincide in any way with the name of the Respondent. For this reason, Complainant finds that Respondent cannot be considered to use the disputed domain name in connection with a bona fide offering of goods and services and is prima facie not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant's trademarks or service marks.
Complainant also asserts to have never licensed or otherwise authorized Respondent or any other third party to use its trademarks or to apply for any domain name incorporating the trademark HUGO BOSS, which shows that Respondent does not hold any rights or legitimate interests in respect of the disputed domain name .
Complainant alleges that the disputed domain name has been registered and is being used in bad faith by Respondent, as the disputed domain name leads to a website where the Respondent uses Complainant's registered trademark in an identical manner and reproducing in a nearly identical manner Complainant's corporate and domain identity, as per Annexes 8 and 9 to the Complaint.
Furthermore, Complainant asserts that the headline of the tab of the disputed domain name refers to "cheap Hugo Boss Outlet Sale in UK, Fashion Hugo Boss Clothing", what represents an attempt to mislead consumers and attract Internet users for commercial gain. Complainant considers it could lead Internet users and consumers to believe that the disputed domain name will lead to an official website associated with Complainant.
Finally, Complainant holds that Respondent is making a commercial use of the disputed domain name, which was registered primarily with the purpose of disrupting the business of a competitor. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
Complainant has duly proven that it is the legitimate owner of trademark registrations for trademarks HUGO BOSS in several countries.
The disputed domain name is composed by the dominant component of Complainant's trademark HUGO BOSS combined or with the addition of descriptive terms "uk" and "tshirts".
The Panel notes that the disputed domain name contains Complainant's trademarks in its entirety and, for this reason, causes confusion and creates a false association between Complainant and Respondent, misguiding consumers into believing that Respondent's activities have the same origin as the products and services provided under the HUGO BOSS trademarks.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant's HUGO BOSS trademarks and that the first element under paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") as follows: "[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
In this case, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant's prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel acknowledges that Complainant has never entered in any agreement, authorization or license with Respondent, regarding the use of Complainant's trademarks, nor is Respondent affiliated with Complainant's activities.
The Panel also understands that Complainant owns trademarks rights in HUGO BOSS since at least 1980, whereas Respondent only registered the disputed domain name in October 20, 2015. This shows that Complainant owns prior rights in the HUGO BOSS trademarks.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: "(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 Panel finds it is highly unlikely that Respondent had no knowledge of Complainants' company name and HUGO BOSS trademarks at the time of registration of the disputed domain name, considering its well-known status in the fashion field.
The Panel also finds that the fact that Respondent used Complainant's trademark HUGO BOSS as the major component of the disputed domain name – considering that "uk" and "tshirts" are descriptive terms indicating products' origin and type – is indicative of bad faith as well.
Despite Complainant's substantiated allegations regarding the use of the disputed domain name, the Panel notes that there is no active website connected to the disputed domain name at the moment. As such, the Panel could not access the disputed domain name's corresponding website to verify the sale of products similar to Complainant's products, or the utilization of images of Complainant's products.
However, it is clear to the Panel based on the case file that the disputed domain name may mislead consumers into believing that Respondent is an authorized retailer of Complainant, which Complainant has confirmed not to be true. Despite the fact that there is currently no apparent use of the disputed domain name by Respondent, passive holding may also be considered to constitute bad faith as stated in paragraph 3.2 of the WIPO Overview 2.0.
Noting again Respondent's failure to submit any response, the Panel concludes that the disputed domain name was registered and is being used in bad faith as per paragraph 4(b)(iv) 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 Complainant HUGO BOSS AG.
Gabriel F. Leonardos
Sole Panelist
Date: December 31, 2015
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