The Complainant is Hugo Boss Trade Mark Management Gmbh & Co. Kg, Hugo Boss AG of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is He Lao Shi, He Lao Shi of Jinhua/Yiwu, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name () is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 22, 2016. On January 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2016, 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 February 5, 2016, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments within 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 February 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 4, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on March 11, 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 (hereafter, just referred to as the Complainant) form part of the "Hugo Boss" group of companies based in Germany. Hugo Boss is a well known premium fashion and accessory group founded in 1924 with almost 13,000 employees and 1,000 retail outlets around the world. In 2014, it generates worldwide net sales of EUR 2.6 billion.
The brand world of Hugo Boss comprises the collections of BOSS, BOSS Orange, BOSS Green and HUGO, covering a comprehensive product range encompassing fashion wear and accessories, fragrance, home textiles and mobile accessories.
The Complainant owns numerous trade mark registrations for the word marks BOSS and HUGO BOSS around the world, including the following:
Country
Mark
Registration No.
Registration Date
International Registration
BOSS
456092
October 9, 1980
International Registration
BOSS
423213
May 24, 1976
International Registration
BOSS
515189
September 11, 1987
International Registration
BOSS
483341
February 8, 1984
International Registration designating China
BOSS
637482
May 31, 1995
International Registration designating China
BOSS
773035
August 16, 2001
The Complainant also owns several domain names incorporating its trade mark BOSS, including the following:
- registered on Sept 14, 1993; and
- registered on December 19, 2005.
The disputed domain name was registered by the Respondent on January 8, 2016, long after the Complainant's registration of the BOSS trade mark (in 1976). As at the date of this decision, the disputed domain name resolves and redirects to a parking page containing various commercial links in English and Chinese. 5. Parties' Contentions A. Complainant
5.1 The Complainant refers to its business and trade marks and claims that the disputed domain name is identical to those trade marks.
5.2 The Complainant contends that given the Complainant's mark and fame, there are no imaginable circumstances under which the Respondent could legitimately use the disputed domain name. It contends that the Respondent has no rights or legitimate interests in the disputed domain name as it does not lead to an active webpage but a parking page with several links related to the Hugo Boss products.
5.3 The Complainant contends that the parking page shows that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs. It also contends that the choice of the generic Top-Level Domain (gTLD) extension "世界" meaning world could draw a reference to the Complainant's brand world comprising the BOSS and HUGO collections, and therefore the disputed domain name was registered to create confusion and mislead Internet users into believing that the Respondent's website is in some way connected with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker. Notwithstanding, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters with the generic Top-Level-Domain in Chinese script;
(b) the disputed domain name resolves to a website with contents/commercial links in English and Chinese;
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center informed the Respondent that it would accept a Response in either English or Chinese; and
(c) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. To require the Complaint to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the 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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the BOSS mark by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant's trade mark BOSS in its entirety. The addition of the gTLD ".世界" (which means "world" in Chinese) does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.
Consequently, the Panel finds that the disputed domain name is identical to the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the BOSS trade mark or register the disputed domain name. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term "Boss".
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish any rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name resolves and redirects to an active website which appears to be a parking page with commercial links to miscellaneous goods and services by third parties. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name. The Panel further notes that there is a notice on the disputed website offering the disputed domain name for sale. Such use of the disputed domain name is neither legitimate nor fair.
The Respondent has failed to file a formal Response, and is in any event not able to successfully rebut the Complainant's prima facie case.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites 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 the Respondent's websites or location or of a product or service on the Respondent's website or location.
Given the worldwide fame of the Complainant and its BOSS trade mark, it is reasonable to believe that the Respondent has prior knowledge of the Complainant's rights in the BOSS mark at the time of its registration of the disputed domain name. Registration of a domain name that incorporates the Complainant's long-established and well known trade marks suggests opportunistic bad faith.
The Respondent has failed to provide any evidence of bona fide use of the disputed domain name. The disputed domain name resolves and redirects to an active website which contains commercial links to miscellaneous goods and services by third parties. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. There is a presumption that the Respondent or a third party stands to profit or make a "commercial gain" from advertising revenue by such an arrangement trading on third party trade marks. In the Panel's opinion, such links clearly seek to capitalise on the trade mark value of the Complainant's trade marks resulting in misleading diversion.
The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
The Respondent has also offered to sell the disputed domain name on its website. This suggests that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(i) of the Policy are applicable to the present case.
The Panel also notes that efforts by the Center to contact the Respondent at the physical address and fax number provided by the Registrar failed which suggests that the Respondent had provided false contact details.
Taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 (boss.xn--rhqv969> be transferred to the Complainant, Hugo Boss AG.
Sok Ling MOI
Sole Panelist
Date: March 30, 2016
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