The Complainant is Hugo Boss Trade Mark Management GmbH & Co. KG of Metzingen, Germany, represented by Taylor Wessing, Germany.
The Respondent is Wenhuan Zhang of Zhengzhou, Henan, 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 in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2017. On November 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2017, 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 November 16, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 17, 2017. The Respondent did not comment on the language of the proceeding by 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 in English and Chinese of the Complaint, and the proceedings commenced on November 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 26, 2017. 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 Complainant, Hugo Boss Trade Mark Management GmbH & Co. KG, is a subsidiary of Hugo Boss AG (“Hugo Boss”). The Complainant, located in Metzingen, Germany, manages the trademark portfolio of Hugo Boss.
Hugo Boss is a German luxury fashion house, headquartered in Germany that operates numerous retail fashion stores for men, women and children. Hugo Boss was founded approximately 90 years ago. In 2010, Hugo Boss sales figures were approximately EUR 1.8 billion.
The Complainant is the owner of approximately 2,400 trademarks for BOSS and approximately 1,850 trademarks for HUGO BOSS. Both trademarks are used for a variety of goods and services, including clothing, shoes, etc. The Complainant is the owner of International Registration No. 773035 (registered on August 16, 2001) – BOSS in classes 9, 14, 18, 25, 28 and 34, which designate, among others, China. The Complainant is also the owner of the International Registrations No. 456092 (registered on October 9, 1980) – BOSS in class 25, and No. 515189 (registered on September 11, 1987) – BOSS in classes 3, 9, 14, 16, 18, 28 and 34.
The disputed domain name was registered on March 2, 2012.
The disputed domain name resolves to a website in the Chinese language, selling men fashion articles under the mark BOSS EYED. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered marks BOSS and HUGO BOSS because it contains the Complainant’s mark BOSS in its entirety.
The Complainant argues that the Respondent tries to mislead consumers and Internet users to think that the origin of the disputed domain name is with Hugo Boss.
The Complainant also argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant.
The Complainant claims that the Respondent registered and used the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding;
(iii) The Complainant would have to incur significant expense in translating the Complaint and attached annexes into the Chinese language;
(iv) The Respondent uses English words in the website operated under the disputed domain name; and
(v) The proceeding would have to be delayed considerably.
Upon considering the above, the Panel determines that English will be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owners of trademark registrations for the mark BOSS and HUGO BOSS, among them, International Registration No. 773035 – BOSS in classes 9, 14, 18, 25, 28 and 34, which designates, among others, China. The Complainant is also the owners of the International Registrations No. 456092 – BOSS in class 25, and No. 515189 – BOSS in classes 3, 9, 14, 16, 18, 28 and 34.
The disputed domain name integrates the Complainant’s BOSS trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the addition of the component “eyed” and the generic Top-Level Domain (“gTLD”) “.net”. The Complainant argued that the term “eyed” may be taken to imply wearing “boss” apparel and that the word “eyed” creates the impression that someone or somebody wears “boss” clothing under the trademark. Be as it may, even if the term “eyed” was not of itself descriptive, the Panel review of the website under the disputed domain name shows that the Respondent, provides therein (in part in the English language) that the component “eyed” is in fact an acronym that stands for: “E: Elegant; Y: Young; E: Easy; D: Dream.” The evidence shows that, even in the eyes of the Respondent, the acronym “eyed” is descriptive and laudatory of the term BOSS, which is identical to the Complainant’s mark. The Respondent did not provide any evidence to suggest that the acronym “eyed” has a meaning that is distinct or separate from the underlying descriptive use as is shown in the website under the disputed domain name. Under the circumstances of this case, the additional component “eyed” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark.
Previous UDRP panels have ruled that the mere addition of a descriptive element does not serve to avoid a finding of confusing similarity between the domain name and the registered trademark: “The only difference between the Disputed Domain Name and the trademark JACK WOLFSKIN is the addition of a suffix ‘jackets’. This is directly descriptive of the goods of the Complainant. In line with established practice of past UDRP panels, the Panel accepts the Complainant’s submission that the additional word ‘jacket’ does not assist to distinguish the Disputed Domain Name from the Complainant’s trademark JACK WOLFSKIN” (Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Huang Yan Jin,WIPO Case No. D2012-0128; Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. lin feifang,WIPO Case No. D2012-1042). See also Bayerische Motoren Werke AG v. RC a/k/a Sami Salem,WIPO Case No. D2012-0366; Bayerische Motoren Werke AG v. Sabri Hammad,WIPO Case No. D2007-0675; and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
The addition of the gTLD “.net” to the disputed domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The gTLD “.com” iswithout significance in the present case since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, since the Complainant has not licensed or otherwise permitted the Respondent to use a variation of its mark BOSS, i.e., the disputed domain name and mark BOSS EYED used in the website that resolves to the disputed domain name. Also, the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the BOSS trademark at least since the year 1980. In view of the evidence filed by the Complainant, and the widespread use of the BOSS and HUGO BOSS trademarks, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety next to the acronym “eyed”. Previous UDRP panels ruled that under such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent has been using the disputed domain name to promote the sale of goods bearing the mark BOSS EYED on the website under the disputed domain name. The mark BOSS EYED resembles the Complainant’s trademarks BOSS and HUGO BOSS. The marks share the term “boss” and, as the Complainant argued, appear in a similar font to the one used by the Complainant. The Complainant’s evidence also shows that the Respondent is using the disputed domain name and the mark BOSS EYED to promote goods similar to those of the Complainant’s, i.e., men’s fashion. The company name on the Respondent’s website however is Shanghai Jie Meng Ya Garment Co Ltd and not BOSS EYED or any such similar name. In addition, the Respondent states on its website that the fashion products sold under the disputed domain name are a high-end version of a Parisian brand named “Boss”, which is identical to the Complainant’s mark. The website under the disputed domain name includes several photographs of Paris. Although the Complainant in based in Germany, consumers may assume that the origin of the brand Boss is the Complainant. The Respondent’s behavior is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and the Complainant’s trademarks, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. Without justification or explanations to the contrary, such actions by the Respondent constitute clear indications of bad faith registration and use of the disputed domain name. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy (See Voigtlander GmbH v. The Photo Village, Inc.,WIPO Case No. D2004-0872)
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s mark and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 the Complainant
Jonathan Agmon
Sole Panelist
Date: January 9, 2018
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