The Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG (“First Complainant”) and HUGO BOSS AG (“Second Complainant”) of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Hu Hui of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 26, 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 December 1, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 2, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on December 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2015.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 12, 2016. 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 belong to the Hugo Boss Group, founded in 1924. The Hugo Boss Group is a market leader in the premium and luxury segment of the global apparel market. It has almost 13,000 employees and generated a net sales of EUR 2.6 billion in fiscal year 2014.
The Hugo Boss Group holds a brand portfolio comprising BOSS, BOSS Orange, BOSS Green and HUGO covering a wide product range encompassing classic to modern apparel, elegant eveningwear and sportswear, shoes, leather accessories, fragrances, eyewear, watches, children’s fashion, home textiles and mobile accessories.
The First Complainant is the registered proprietor of the trademark HUGO BOSS in many jurisdictions, including the following:
Jurisdiction
Trade Mark No.
Registration Date
European Union
000049254
April 1, 1996
European Union
006645204
January 29, 2008
International
482758
February 2, 1984
International
513257
April 10, 1987
Germany
1007460
December 7, 1979
Germany
1056562
August 3, 1983
Germany
1103572
November 12, 1986
China
949338
February 21, 1997
China
253481
June 30, 1986
China
1960721
September 14, 2002
The Second Complainant is the registrant of numerous domain names incorporating the trademark HUGO BOSS, including and . The Complainants has been a victim of cybersquatting as demonstrated by past UDRP panel decisions (e.g., HUGO BOSS Trademark Management GmbH & Co. KG v. Guanjing / Daziran, Case No. D2014-0801; HUGO BOSS AG, HUGO BOSS Trademark Management GmbH & Co. KG v. freeoakley / WhoisGuard,WIPO Case No. D2013-0540; HUGO BOSS AG, HUGO BOSS Trademark Management GmbH & Co. KG v. A Domain Privacy / A Legal, Host Master / Transure Enterprise Ltd,WIPO Case No. D2012-0273).
The Respondent appears to be an individual based in Beijing. Beyond the WhoIs information of the Disputed Domain Name and the registrar verification in this proceeding, little information about the Respondent is known. The physical address and facsimile details of the Respondent in the WhoIs information are invalid as attempts to deliver the Written Notice of the commencement of administrative proceeding to the Respondent via these avenues have failed.
The Disputed Domain Name was registered on April 30, 2015. The Disputed Domain Name resolves to a website (the “Respondent’s Website”) written entirely in English and features the trade mark HUGO BOSS prominently. The following extract was found in the “About Us” section on the homepage of the Respondent’s website:
“Welcome to the Hugo Boss Australia Online Store. Here you can find the international and sophisticated fashions for men and women. The collections Boss, Boss Green, Hugo and Boss Orange offer everything you need for a perfect look for formal occasions or free time. Get the sophisticated designs, the exquisite materials and the premium silhouettes from Hugo Boss.” 5. Parties’ Contentions A. Complainant
The Complainants contend that:
a) The Disputed Domain Name is identical or confusingly similar to the trademark HUGO BOSS in which the Complainants have rights. The Disputed Domain Name incorporates the trademark HUGO BOSS in its entirety. The addition of the “-australia” suffix in the Disputed Domain Name is clearly used for a geographical purpose and does not have any impact on the overall impression of the Disputed Domain Name. Therefore, the Dispute Domain Name is identical to the trademark HUGO BOSS;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The trademark HUGO BOSS was used and became well-known long before the Disputed Domain Name was registered. The Respondent, being active in the same fashion industry as the Complainants, could not be unaware the Complainants. The trademark HUGO BOSS has not been licensed or authorized to the Respondent for use or for registration as part of a domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. There is no other right holder of the trademark HUGO BOSS other than the Complainants at the trademark offices. The Respondent’s name does not coincide with the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith. The trademark HUGO BOSS is well-known and the Respondent must have had knowledge of the Complainant’s rights when the Disputed Domain Name was registered. The Disputed Domain Name is not used for any bona fide offering of goods or services. The Respondent’s Website offers to sell clothing articles under the trademark HUGO BOSS which was not allowed by the Complainants. The Disputed Domain Name was registered to create confusion and mislead the Internet user into believing that the Complainants and the Respondent are affiliated or the Respondent’s Website is endorsed. The Respondent’s Website represents an attempt to wrongly lead the consumer and attract for commercial gain Internet users who could think that it is managed by the Complainants. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language
Pursuant to paragraph 11(a) of the Rules, unless 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 Registrar has affirmed that the language of the Registration Agreement for the Disputed Domain Name is Chinese. However, the Complainants filed their Complaint in English and have requested that English be the language of the proceeding. Having considered the circumstances, the Panel allows the Complainants’ request, having taken into account the following factors:
a) The Complainants are based on Germany where Chinese is not a common language.
b) The Respondent’s Website is entirely in English and it thus demonstrates a working knowledge of the English language by the Respondent;
c) The Respondent’s Website holds itself, and by implication the Respondent, out as a global online retailer based in Australia. Judicial notice is taken of the fact that English is the prevalent language in Australia;
d) The Complaint has already been filed in English, to which the Respondent did not respond. Requiring that the Complaint be translated into Chinese would place an unnecessary burden on the Complainant;
e) The Respondent, having been given a fair chance to object, has not filed any response or commented on the Complainants’ request that English be adopted as the language of the proceeding; and
f) Requiring a Chinese translation of the Complaint will lead to unnecessary delay in the proceeding. 6.2. Discussion
In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
d) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the trademark registrations in the evidence tendered, the Complainants have established that they own rights in the trademark HUGO BOSS. The Disputed Domain Name not identical to the Complainants’ trademark. Nonetheless, the Complainants’ trademark HUGO BOSS is incorporated and is readily recognizable within the Disputed Domain Name given that the latter incorporates the trademark wholly. The only difference between the trademark HUGO BOSS and the Disputed Domain Name is the addition of the suffix “-australia” which clearly geographically associates the Respondent’s Website and/or Disputed Domain Name with Australia. The consensus opinion of past panels, outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), is that the mere addition of generic or descriptive terms to a trademark in a domain name is insufficient to prevent confusing similarly between the trademark and the domain name. The Panel does not see any reason to depart from this consensus opinion and holds that the Disputed Domain Name is confusingly similar to the trademark HUGO BOSS. The first limb of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
The Complainant bears the burden of establishing prima facie that the Respondent lacks rights or legitimate interests in the Dispute Domain Name. Once such prima facie case is made out, the burden shifts to the Respondent.
The Complainants have maintained that the Respondent was never authorized, licensed or otherwise allowed by the Complainants to use the trademark HUGO BOSS or to register a domain name incorporating the same. This has not been denied or refuted by the Respondent and the Panel accepts that the Respondent does not have such authorization, licence or permission. There is also no evidence before the Panel that suggests that the Respondent is commonly known by the Disputed Domain Name. Therefore, the Panel finds prima facie that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
In the absence of any evidence or explanation to the contrary offered by the Respondent, the prima facie case has not been rebutted and the Panel holds that the second limb of paragraph 4(a) of the Policy is also established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which, if fulfilled, constitutes evidence of bad faith registration and use of a domain name. In particular, paragraph 4(b)(iv) of the Policy provides that:
“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 you web site or location.”
In view of the manner in which the trademark HUGO BOSS is used on the Respondent’s Website, the Panel finds it inconceivable that the Respondent was unaware of the trademark HUGO BOSS. Specifically, the Respondent’s Website plainly holds itself out as the “Hugo Boss Australia Online Store” and offers apparel and associated goods for sale. It follows without a doubt that the Disputed Domain Name could only have arisen from the Respondent’s knowledge and familiarity with the trademark HUGO BOSS and its associated goods.
The Respondent’s intention of commercial gain in using the Disputed Domain Name is evident from the Respondent’s Website by the offering of products for sale, complemented by ostensible online shopping cart facilities. Not only does the Respondent’s Website actively describes itself as the “Hugo Boss Australian Online Store”, explicit references to other trademarks of Complainants, namely “Boss, Boss Green, Hugo and Boss Orange” are used throughout the Respondent’s Website. These descriptions can only have the effect of affiliating the Respondent’s Website with the Complainants and/or the trademark HUGO BOSS.
Given the above, the Panel is of the view that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the trademark HUGO BOSS as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or of the products on the same within the meaning of paragraph 4(b) of the Policy.
As such, the Panel holds that the third limb of paragraph 4(a) of the Policy is made out. 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 HUGO BOSS AG.
Kar Liang Soh
Sole PanelistDate: January 26, 2016
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