Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG (hereinafter collectively or individually named “Complainant”) of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
Respondent is Wang Hui of Dalian, Liaoning, China. 2. The Domain Name and Registrar
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 October 22, 2016. On October 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On November 2, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 2, 2016, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.
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 Respondent of the Complaint, and the proceedings commenced on November 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default November 29, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on December 2, 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
Complainant is a company incorporated in Mezingen, Germany. Founded in 1924, Complainant and its related group companies (together “Hugo Boss”) is one of the market leaders in the premium and luxury segment of the global apparel market. It generated with almost 14,000 employees net sales of EUR 2.8 billion in fiscal year 2015, making it one of the most profitable listed apparel manufacturers in the world.
Complainant owns numerous trademark registrations for the word mark HUGO BOSS around the world, including China (since 1997; see Annex 6 to the Complaint). It also owns numerous domain names which incorporate the registered trademarks either alone or together with descriptive words, such as (since August 8, 1995), (since April 24, 1997) and (since May 6, 1997) (see Annex 7 to the Complaint).
Respondent is Wang Hui of Dalian, Liaoning, China. The disputed domain name was registered on April 30, 2015. The registration date of the disputed domain name is long after Complainant’s HUGO BOSS marks became internationally well known. The disputed domain name resolved to a website where Respondent holds itself out as being an affiliate of Complainant, including content copied directly from Complainant’s official website, and purporting to offer HUGO BOSS branded products being offered by Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the HUGO BOSS Marks in which Complainant has rights. The only difference is the additions of the descriptive word “suits”, a dash between the words hugo and boss, and the non-distinguishing generic Top-Level Domain (“gTLD”) “.com.”
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not formally reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant represents an international company with main quarters in Metzingen, Germany. Its website is available in several languages as they form an internationally famous company, and more especially in English.
(b) English being the main spoken language in the world, and the main working language in the field of fashion and Internet, there should not be many problems for Respondent to understand the Complaint and the requirements.
(c) Respondent registered the disputed domain name using an identical form and in Latin characters Complainant’s trademark. This indicated that English could be understood by Respondent.
(d) English is the main working language at the WIPO Arbitration and Mediation Center.
(e) Should Complainant have to obtain a translation of the Complaint this would incur extremely high costs most probably above USD 1,000.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further provides:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from Germany, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes Latin characters “hugo” and English words “boss”, “suits” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047; Hugo Boss AG v. Guan Jing, Lin Jing, li xiaoyong,WIPO Case No. D2012-1690).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name was registered in Latin characters and is composed of words in the English language, rather than Chinese script; (b) the website resolved from the disputed domain name is in English, and Respondent is apparently doing business in English through the website; (c) the website appears to have been directed to users worldwide (particularly English) rather than Chinese speakers (because the default language of the website is English); (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these 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 its ability to articulate the arguments for this proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that 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 requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the HUGO BOSS marks acquired through registration. The HUGO BOSS marks have been registered worldwide including in China, and Complainant has a widespread reputation as a successful, international fashion group of companies in the high-end, luxury fashion retail market.
The disputed domain name comprises the HUGO BOSS Mark in its entirety. The disputed domain name simply connects the HUGO BOSS Mark with the additional word “suit” and “-” (hyphen) between “hugo” and “boss”. This does not eliminate the identity or the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087).
The addition of the descriptive terms of “suits” and “-” (hyphen) between “hugo” and “boss” to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. Suits are one of major products produced by Complainant. The disputed domain name may lead to confusion on the part of Internet users who may falsely believe that the disputed domain name is operated by Complainant for providing HUGO BOSS-branded products or services in China. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the HUGO BOSS Marks.
The Panel therefore holds that the Complaint fulfils the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the HUGO BOSS marks globally, including registration in China since 1997 (see Annex 6 to the Complaint) which long precedes Respondent’s registration of the disputed domain name (in 2015). It also owns numerous domain names which incorporate the registered trademarks either alone or together with descriptive words, such as (since August 8, 1995), (since April 24, 1997) and (since May 6, 1997) (see Annex 7 to the Complaint). According to Complainant, Complainant is one of the market leaders in the premium and luxury segment of the global apparel market. It generated with almost 14,000 employees net sales of EUR 2.8 billion in fiscal year 2015, making it one of the most profitable listed apparel manufacturers in the world.
Moreover, Respondent is not an authorized dealer of HUGO BOSS branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
More specifically, based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Hugo Boss” in its business operation or the use of the HUGO BOSS Marks and design on its websites (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the HUGO BOSS marks or to apply for or use any domain name incorporating the HUGO BOSS marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2015, long after the registration of the first HUGO BOSS mark. The disputed domain name is identical or confusingly similar to Complainant’s HUGO BOSS marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported HUGO BOSS products at the disputed domain name (Annex 9 to the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of 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 Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the HUGO BOSS mark with regard to its products. Complainant has registered its HUGO BOSS marks internationally, including registration in China (since 1997). Moreover, the websites to which the disputed domain name resolves advertise for sale various purported HUGO BOSS products (Annex 9 to the Complaint) (as mentioned above).
Respondent would likely not have advertised products purporting to be HUGO BOSS products on the Website if it was unaware of Complainant’s reputation. In other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the HUGO BOSS mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s HUGO BOSS branded products.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainant’s HUGO BOSS branded products and services without authorization.
To establish an “intention for commercial gain” for the purpose of the Policy, evidence is required to indicate that it is “more likely than not” that the intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the HUGO BOSS marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Website (see Annex 9 of the Complaint). In other words, Respondent has through the use of confusingly similar domain name and webpage content created a likelihood of confusion with the HUGO BOSS marks. Noting also that apparently no clarification as to Respondent’s relationship with Complainant is made on the homepage of the disputed domain name, Internet users are led to believe that the Website is either Complainant’s site or the site of official authorized agents of Complainant, which they are not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain names are being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conducts of Respondent as far as the Website is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of 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 be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: December 16, 2016
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