The Complainant is HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG (collectively, the "Complainant") of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Xinliang Gong, Gong Xinliang of Taizhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English 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 October 25, 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 October 27, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On October 28, 2016, the Complainant confirmed its request that English be the language of the proceeding. The 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 the Respondent of the Complaint in English and Chinese, and the proceeding commenced on November 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2016.
The Center appointed Susanna H.S. Leong 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
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. Headquartered in Metzingen, the Complainant is in the business of offering premium fashion and accessories for men and women.
The Complainant's stable of brands comprises the collections of HUGO BOSS, BOSS, BOSS Orange, BOSS Green and HUGO. The brands cover a comprehensive product range encompassing classic to modern apparel, elegant eveningwear and sportswear, shoes, leather accessories as well as licensed fragrances, eyewear, watches, children's fashion, home textiles and mobile accessories.
The Complainant is the registered owner of the HUGO BOSS trademark in many countries all over the world in respect of goods in classes 3, 9, 14, 18 and 25 of the Nice Classification.
Furthermore, the Complainant is also the registered owner of the following European Union Trademarks, International Trademarks and Trademark Registrations in China:
- European Union Trademark HUGO BOSS no. 000049254 of March 26, 2008 in classes 3, 9, 10, 12, 14, 16, 18,20,24,25,27,28,29,30,31,32,35,42
- European Union Trademark HUGO BOSS no. 006645204 of November 16, 2012 in class 16
- International Trademark Registration HUGO BOSS no. 430400 of June 3, 1977 designating more than 40 countries 18, 24, 25
- International Trademark Registration HUGO BOSS no. 513257 of April 10, 1987 designating more than 35 countries in classes 9, 14, 16, 18, 25, 28,34
- International Trademark Registration HUGO BOSS no. 637658 of May 31, 1995 designating China in classes 29, 30, 31, 32, 33.
- Trademark Registration HUGO BOSS no. 9277541 of April 28, 2012 in China in class 24
- Trademark Registration HUGO BOSS no. 1960721 of September 14, 2002 in China in Class 35
- Trademark Registration HUGO BOSS no. 949338 of February 21, 1997 in China in Class 25
- Trademark Registration HUGO BOSS no. 253481 of June 30, 1986 in China in Class 25
Furthermore, the Complainant owns and operates websites at numerous domain names incorporating the HUGO BOSS Marks, for instance , and .
Prior UDRP decision such as Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin/Personal, Loung Dinh Dung,WIPO Case No. D2011-0564, has held that the HUGO BOSS mark is an internationally well-known mark.
The Respondent registered the disputed domain name on April 30, 2015. The disputed domain name resolves to a website selling goods under trademark HUGO BOSS. 5. Parties' Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:
1) The Complainant is the owner of multiple registrations and applications of trademarks consisting of or containing the famous HUGO BOSS mark in several classes in relation to perfumery, clothings and accessories.
2) The Complainant has run its business under the HUGO BOSS mark since 1924 and operates internationally employing thousands of employees all over the world. The Complainant owns and operates websites at numerous domain names incorporating the HUGO BOSS Marks, for instance , and .
3) Prior UDRP panels have held that the Complainant's HUGO BOSS trademark is an internationally well-known mark.
4) The disputed domain name is identical to the Complainant's trademarks HUGO BOSS and domain names as it wholly incorporates the words "hugo boss".
5) The addition of the generic Top-Level Domain ("gTLD") ".org" does not have any impact on the overall impression of the dominant portion of the names "hugo boss" and is therefore irrelevant in the determination of the confusing similarity between the signs.
6) The disputed domain name is made up of the registered trademark HUGO BOSS and a descriptive term "suits" with a hyphen in front of it, the combination of which is not a distinguishing factor.
7) Therefore the Complainant asserts that the disputed domain name and the Complainant's trademarks and domain names are identical or at least, that the disputed domain name is clearly confusingly similar to the registered trademark HUGO BOSS.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
1) The Respondent has no rights or legitimate interests to the name "hugo boss" which is the name of the Complainant's company.
2) The Complainant has not licensed or otherwise authorized the Respondent to use their HUGO BOSS trademark or to apply for any domain name incorporating the trademark.
3) There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name since it leads to a webpage selling clothing and accessories that involves an unauthorized use of the HUGO BOSS mark without the consent of the Complainant.
4) There is no holder of rights to the name "hugo boss" other than the Complainants in either the trademark offices or the registry of companies.
5) The Respondent's name does not coincide with the disputed domain name.
6) The Complainant has never consented nor authorized the registration of domain names which coincides with their company name.
7) Given the number of trademarks registered by the Complainants and the fame, goodwill and notoriety of the HUGO BOSS mark, there are no imaginable circumstances under which the Respondent could legitimately use the disputed domain name.
8) Therefore the Complainant asserts that the Respondent does not hold any rights or legitimate interests in respect of the disputed domain name .
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
1) That HUGO BOSS is well-known and that the Respondent must have had knowledge of the Complainant's rights when he registered the disputed domain name.
2) There is no bona fide offering of goods or services as leads to a webpage selling clothing and accessories that involves an unauthorized use of the HUGO BOSS mark without the consent of the Complainant.
3) The Complainant asserts that it is obvious that the disputed domain name has been registered to create confusion and mislead the Internet user into believing that the Complainants and the Respondent are affiliated.
4) Panels of several prior UDRP decisions have decided the transfer of disputed domain names to the Complainant in cases such as HUGO BOSS AG v. Abilio Castro,WIPO Case No. DTV2008-0001 for the domain name ; HUGOBOSS AG, HUGO BOSS Trademark Management GmbH & Co. KG. v. A Domain Privacy I A Legal, Host Master I Transure Enterprise Ltd,WIPO Case No. D2012-0273 for the domain name ; HUGO BOSS Trademark Management GmbH & Co. KG v. Guanjing I Daziran,WIPO Case No. D2014-0801 for the domain name ; HUGOBOSS AG, HUGO BOSS Trademark Management GmbH & Co. KG v. fi:eeoakley I WhoisGuard,WIPO Case No. D2013-0540 for the domain name . B. Respondent
The Respondent did not reply to the 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 unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented to the Panel, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request that English should be the language of the present proceeding. The Respondent did not comment on the Complainant's request.
After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel's discretion under the Policy
Paragraph 11(a) of the Rules provides:
"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."
Thus, the Parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both Parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest that, in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English and the website at the disputed domain name is in the English language; (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant's allegations.
Considering these circumstances, 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. The Panel decides that the proceeding shall be in English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the 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 Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the HUGO BOSS mark in connection with men and women clothing and accessories in many jurisdictions in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the HUGO BOSS mark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant's HUGO BOSS mark is well known in connection with the goods and services offered by the Complainant in many countries as well as in China.
In assessing the degree of similarity between the Complainant's trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant's products or services.
The disputed domain name consists of the Complainant's HUGO BOSS mark in its entirety with the addition of the gTLD suffix ".org". The Panel is of the view that the most prominent and distinctive part of the disputed domain name comprised of the words "hugoboss" without a space in it, which is identical to the Complainant's registered trademark HUGO BOSS. Given the fame and notoriety of the Complainant's HUGO BOSS mark, the addition of suffixes such as ".org" and descriptive words such as "-suits" with a hyphen in front of it, does not typically constitute a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant's HUGO BOSS mark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the HUGO BOSS mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "hugoboss-suits".
(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the HUGO BOSS mark.
(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services.
(4) On the contrary, the disputed domain name is currently connected to a webpage selling clothing and accessories that involves an unauthorized use of the HUGO BOSS mark without the consent of the Complainant and which does not clarifying the relationship between the Complainant and the Respondent through a disclaimer or otherwise. The Panel finds that the Respondent therefore does not have the right to use the HUGO BOSS mark in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
(5) The Complainant and its HUGO BOSS mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with men and women clothing and accessories and the Complainant holds registered trademarks in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, 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 the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP 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. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. 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 a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark 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 domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its HUGO BOSS mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name.
Furthermore, the Complainant has established a substantial presence on the Internet. The Complainant has also registered and used domain names which incorporate the HUGO BOSS mark such as , and . A simple search on the Internet would reveal the presence of the Complainant's trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet.
The Panel notes that the website at the disputed domain name leads to a webpage selling clothing and accessories that involves an unauthorized use of the HUGO BOSS mark without the consent of the Complainant or disclaimer. In the absence of a plausible explanation, this is evidence that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
The Panel finds that given the widespread fame of the Complainant's HUGO BOSS mark, a lack of plausible explanation for the choice of incorporating the Complainant's well-known trademark in the disputed domain name, the connection of the disputed domain name to a webpage selling clothing and accessories that involves an unauthorized use of the HUGO BOSS mark without the consent of the Complainant and the lack of plausible evidence of using the disputed domain name for bona fide offering of goods or services, are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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 the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: December 23, 2016
Full & Egal Universal Law Academy