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 Cheng Yong of Guangzhoushi, China. 2. The Domain Name and Registrar
The disputed domain name (the “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 January 26, 2016. On January 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 27, 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.
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 January 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 22, 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.
Consolidated complaint
As stated in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), in order for multiple complainants to file a single complaint against a respondent, the complainants must establish the following criteria:
“(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion;
(ii) it would be equitable and procedurally efficient to permit the consolidation”.1
The Panel finds that consolidation in this case is proper. On January 26, 2016, the Complainants Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG filed a joint complaint against the Respondent. The Complainants claim to have a common grievance against the Respondent because there is a common legal interest in rights affected by the Respondent’s conduct. The Complainant Hugo Boss Trade Mark Management GmbH & Co. KG owns numerous trademark registrations for the HUGO BOSS trademark. The Complainant Hugo Boss AG owns several domain names incorporating the HUGO BOSS trademark and operates websites associated with those domain names. Both Complainants are members of the Hugo Boss Group. The Panel sees no inequity to Respondent, who had full opportunity object to the consolidation but failed to do so. 4. Factual Background
The Complainants are members of the Hugo Boss Group, which is one of the market leaders in the premium and luxury segment of the global apparel market. The Complainants own numerous trademark registrations in the HUGO BOSS trademark around the world, such as Community Trademark registration in the mark HUGO BOSS, no. 000049254 in classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 35, 42; Community Trademark in the mark HUGO BOSS no. 006645204 in class 16; International Trademark Registration in the mark HUGO BOSS no. 430400 designating more than 40 countries in classes 18, 24, 25 since 1977. The Complainants also own several domain names incorporating the HUGO BOSS trademark, such as and .
The Respondent registered the Domain Name on October 14, 2015. The Domain Name consists of the words “shop”, “store”, the HUGO BOSS mark and the generic Top-Level Domain (“gTLD”) “.com”. 5. Parties’ Contentions A. Complainants
The Complainants allege that the Hugo Boss Group was founded in 1924 and is one of the market leaders in the premium and luxury segment of the global apparel market. The Complainants claim that they own numerous trademark registrations for the HUGO BOSS trademark around the world and numerous domain names incorporating the HUGO BOSS trademark. The Complainants allege that the HUGO BOSS mark has been considered well-known.
The Complainants argue that the Domain Name is identical or confusingly similar to the HUGO BOSS mark because the Domain Name wholly incorporates the HUGO BOSS trademark. The Complainants further argue that the addition of the gTLD “.com” is irrelevant in the determination of the confusing similarity between the Domain Name and the HUGO BOSS mark. The Complainant claims that the descriptive terms “store” and “shop” in the Domain Name should not influence the comparison of the Domain Name and the HUGO BOSS mark.
The Complainants contend that the Respondent has no rights or legitimate interests in the Domain Name, which includes the name of the Complainants’ company and trademark. The Complainants claim that they have not licensed or otherwise authorized the Respondent to use the HUGO BOSS trademark, or to register any domain name incorporating the trademark. The Complainants argue that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name because the website associated with the Domain Name is used for unauthorized activities, such as sales of counterfeit Complainants’ goods. The Complainants allege that the Respondent does not hold any trademark registrations in the HUGO BOSS mark and that the Respondent’s name is not similar to the Domain Name. The Complainants argue that because of the HUGO BOSS trademark’s fame and notoriety, there are no imaginable circumstances under which the Respondent could legitimately use the Domain Name.
The Complainants claim that the Domain Name was registered and is being used in bad faith. The Complainants contend that because the HUGO BOSS trademark is well-known, the Respondent must have had knowledge of the Complainants’ rights in the mark when he registered the Domain Name. The Complainants argue that the Respondent is using the Domain Name in bad faith because he is using the Domain Name to direct to a website that offers for sale HUGO BOSS clothing without the Complainants’ authorization. The Complainants further argue that the Domain Name was registered to create confusion and to mislead Internet users into believing that the Complainants are affiliated with or endorse the website associated with the Domain Name. The Complainants allege that the website associated with the Domain Name was designed to imitate the Complainants’ website to mislead consumers into believing that the website associated with the Domain Name is managed by the Complainants. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
In this UDRP proceeding, the Complainants must prove, by a preponderance of the evidence2 each of the following UDRP elements3 :
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a Complainants have rights. The Complainants proved that they have rights in the HUGO BOSS trademark by submitting copies of trademark registrations for the HUGO BOSS mark (the earliest of which dates to 1977).
The Domain Name consists of the Complainants’ HUGO BOSS mark, the generic words “store”, “shop” and the gTLD “.com”. It is well-established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only deviation is the inclusion of numbers, letters or a generic term4 or the gTLD5 , as prefix or suffix, such prefix or suffix does not negate the confusing similarity between the domain name and the mark. Here, the Complainants’ mark is the distinctive and prominent element of the Domain Name. Neither the generic words “store” and “shop”, nor the gTLD “.com” negate the confusing similarity between the Domain Name and the Complainants’ HUGO BOSS mark.
Therefore, the Panel finds that the Complainants have satisfied the first UDRP element. B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainants are “required to make out a prima facie case that the respondent lacks rights or legitimate interests”6 in the Domain Name.7
The Complainants claim and the Respondent does not deny that the Complainants did not license or otherwise authorize the Respondent to use the HUGO BOSS trademark in the Domain Name. Furthermore, the record shows that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name because the website associated with the Domain Name is used for sales of allegedly counterfeit Complainants’ goods. Each page of the Respondent’s website associated with the Domain Name prominently displays the Complainants’ HUGO BOSS trademark to create an impression of association or affiliation with the Complainants. The record shows a lack of any disclosures regarding the Respondent’s relationship with the Complainants. As a previous UDRP panel noted: “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.8 And this is exactly what the Respondent is trying to do in the present case.
Based on the above-mentioned circumstances, the Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Once a prima facie case is made, the burden of production shifts to the respondent, who will have to demonstrate that he has rights or legitimate interests in the disputed domain name.9 Since the Respondent in this case failed to satisfy his burden of production, the Panel finds that the second UDRP element has been satisfied. C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainants must prove that the Domain Name was registered and is being used in bad faith.10 Paragraph 4(b) of the UDRP provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The situation described in paragraph 4(b)(iv) of the UDRP, which reads as follows, fits the present case:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
Here, the record shows that the Respondent is using the Domain Name to direct to a website that offers HUGO BOSS merchandise for sale. The website prominently features the Complainants’ HUGO BOSS trademark and offers no disclosure as to the absence of any relationship between the Complainants and the Respondent. Therefore, it is evident that the Respondent has intentionally attempted to attract for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainants’ HUGO BOSS trademark as to the source, sponsorship or affiliation of his website.
Accordingly, the Panel finds that the third UDRP element has been satisfied. 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 Domain Name, , be transferred to the Complainant Hugo Boss AG.
Olga Zalomiy
Sole Panelist
Date: February 24, 2016
1 Paragraph 4.16, WIPO Overview 2.0.
2 Paragraph 4.7, WIPO Overview 2.0.
3 Paragraph 4(a) of the UDRP.
4 Paragraph 1.2, WIPO Overview 2.0.
5 Id.
6 Paragraph 2.1, WIPO Overview 2.0.
7 Paragraph 4(a)(ii) of the UDRP.
8 Drexel University v. David Brouda,WIPO Case No. D2001-0067.
9 Paragraph 2.1, WIPO Overview 2.0.
10 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
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