The Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Irfan Butt of Rome, Italy. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2016. On June 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 6, 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 June 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2016.
The Center appointed Ian Lowe as the sole panelist in this matter on July 13, 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 are members of the Hugo Boss Group (“Hugo Boss”) which was founded in 1924. Since that date, Hugo Boss has carried on business under the trade mark HUGO BOSS developing and marketing premium fashion and accessories for men and women. In 2015 it had almost 14,000 employees and net sales worldwide of EUR 2.8 billion.
The Complainant Hugo Boss Trademark Management GmbH & Co. KG is the owner of a substantial number of trademark registrations around the world including EU Trademark number 49254 HUGO BOSS registered on March 26, 2008 and International Trademark Registration 513257 HUGO BOSS registered as of April 10, 1987 designating more than 35 countries. The Complainant Hugo Boss AG owns and operates websites at numerous domain names incorporating HUGO BOSS trademarks, including and . In light of their common legal interest in the HUGO BOSS trademark and its use, the Panel is satisfied that it is appropriate for the Complainants to act as joint Complainants in these proceedings.
The Domain Name was registered on January 9, 2016 and at the date of preparation of the Complaint resolved to a holding page stating that the website was under construction. 5. Parties’ Contentions A. Complainants
The Complainants contend that the Domain Name is identical or confusingly similar to their HUGO BOSS trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainants must prove that:
(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
The Complainants have undoubted, uncontested rights in the trademark HUGO BOSS both by virtue of their numerous trademark registrations around the world and as acquired through widespread use for over 90 years. Leaving aside the generic Top Level Domain suffix “.site”, the Domain Name is identical to the Complainants’ trademark. Accordingly, the Panel finds that the Domain Name is identical to a mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainants have made out a strong prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The Panel considers that in view of the notoriety of the Complainants’ name it is clear that the Domain Name can only refer to the Complainants. The Respondent has not been authorised by the Complainants to register a domain name incorporating the HUGO BOSS trademark. The Respondent has chosen not to respond to the Complaint and has done nothing to dispel the strong prima facie case raised by the Complainants. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
On the same basis, the Panel is in little doubt that the Respondent must have had the Complainants and their rights in the HUGO BOSS mark in mind when it registered the Domain Name. Furthermore, the Panel cannot conceive of any legitimate reason for the Respondent to register the Domain Name or of any legitimate purpose to which the Respondent could put the Domain Name. Although the Respondent does not appear to have made any active use of the Domain Name, by far the majority of UDRP panelists support the finding in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 that the passive holding of a domain name by a respondent may amount to the respondent acting in bad faith. Accordingly, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. 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.
Ian Lowe
Sole Panelist
Date: July 27, 2016
Full & Egal Universal Law Academy