The Complainants are Hugo Boss Trade Mark Management GmbH & Co KG, Switzerland (the “First Complainant”) and Hugo Boss AG, Germany (the “Second Complainant”), represented by BrandIT GmbH, Switzerland.
The Respondent is Zhao Ke, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on September 7, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 12, 2020. The Center verified that the Complaint together with the amended 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 September 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2020. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on October 19, 2020. 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 belong to the Hugo Boss Group, founded in 1924, which is a leader in the premium and luxury segment of the global apparel market. It manufactures clothing, shoes, fashion accessories, fragrances as well as skincare products, under various trademarks including HUGO BOSS and BOSS. The Hugo Boss Group operates in 128 countries (including China) having more than 14,600 employees and generated sales of EUR 2.9 billion in fiscal year 2019. According to its 2019 Annual Report, 15% of its sales were generated in Asia, where the group has 550 points of sales, 134 freestanding retail stores and headquarters in Shanghai, China and Hong Kong, China. The HUGO BOSS mark is a well known, as it has been recognized by prior decisions under the Policy 1. The Complainants have a shared interest in these proceedings. The First Complainant, Hugo Boss Trade Mark Management GmbH & Co. KG is the owner of a substantial number of registrations for the trademark HUGO BOSS worldwide, including: - International Registration No. 550975 BOSS HUGO BOSS, figurative, registered on March 23, 1990, in classes 9, 14, 16, 18, 24, 25, 28, and 34, designating among other jurisdictions China; - International Registration No. 637658 HUGO BOSS, word, registered on May 31, 1995, in classes 29, 30, 31, 32, and 33, designating among other jurisdictions China; - International Registration No. 754225 BOSS HUGO BOSS, figurative, registered on February 8, 2001, in classes 3, 9, 14, 18, 24, 25, 28, 34, 35, and 42, designating among other jurisdictions China; - International Registration No. 1228292 HUGO BOSS, word, registered on August 13, 2014, in classes 9, 16, and 21, designating among other jurisdictions China; - International Registration No. 765707 HUGO BOSS, word, registered on June 1, 2001, in classes 35, 38, and 41, designating among other jurisdictions China; - International Registration No. 978561 HUGO BOSS, word, registered on July 10, 2008, in class 16, designating among other jurisdictions China; and - International Registration No. 1076645 HUGO BOSS, word, registered on March 15, 2011, in classes 9, 27, and 35, designating among other jurisdictions China; (collectively the “HUGO BOSS mark”). The Second Complainant, Hugo Boss AG, is the registrant of numerous domain names incorporating the HUGO BOSS mark, including The disputed domain name was registered on August 17, 2013 and it is inactive, resolving to a page with an Internet browser error message indicating “the content of the page cannot be displayed”. 5. Parties’ Contentions A. Complainants Key contentions of the Complaint may be summarized as follows: The disputed domain name incorporates the HUGO BOSS mark in its entirety being identical to this well-known trademark. The country code Top-Level Domain (“ccTLD”) “.me” does not add any distinctiveness. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Parties are not affiliated and the Complainants have not licensed or authorized the registration or use of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or owns any registered trademarks including the terms “hugoboss.me”, and the disputed domain name resolves to an inactive page. The disputed domain name was registered and is being used in bad faith. The HUGO BOSS mark is well known worldwide, having a strong presence in China, where the Respondent seems to be located, as well as online and in social media. A simple search over the Internet reveals its existence, so it is inconceivable that the Respondent was unaware of the existence of the Complainants’ mark. The disputed domain name has been registered targeting the Complainants’ trademark with the intention to take advantage of its reputation. The disputed domain name incorporates the HUGO BOSS mark in its entirety, which creates by itself a presumption of bad faith, and the Respondent has been involved in prior cases under the Policy related to other well-known trademarks belonging to third companies, which shows a pattern of conduct of registering the domain names incorporating well-known trademarks. On February 27, 2020, the Complainants sent a cease and desist letter to the Respondent through the Registrar that was replied (from an email address different from the one revealed by the Registrar) offering the transfer of the disputed domain name for USD 4,999, which exceeds the out-of-pocket costs related to the disputed domain name. The Respondent has tried to conceal its identity and contact details under a privacy shield and has probably provided false contact details in the registration of the disputed domain name, which are further indications of bad faith. The Complainants have cited previous decisions under the Policy and various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), considered supportive of their position, and request the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings The Complainants have made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. A. Identical or Confusingly Similar The Complainants indisputably have rights in the registered HUGO BOSS mark. The disputed domain name incorporates the HUGO BOSS mark in its entirety, and the ccTLD “.me” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, and 1.11.1 of the WIPO Overview 3.0. Accordingly, this Panel finds that the disputed domain name is identical to the Complainants’ mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests Although the Complainants bear the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainants’ assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainants’ prima facie case. However, the Respondent has not replied to the Complainants’ contentions. A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. The disputed domain name incorporates the HUGO BOSS mark in its entirety being identical to this well-known trademark. Therefore, the Panel considers that there is a high risk of implied affiliation and it not possible to conceive the existence of rights or legitimate interests on the Respondent with respect to the disputed domain name, since the confusion or risk of association or affiliation is implicit in the disputed domain name. The disputed domain name creates the impression that it refers to one of the Complainants’ official stores or distributors, suggesting sponsorship or endorsement by the Complainants. It is further remarkable that the Respondent has not replied to the Complaint not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstances that may be considered as a right or legitimate interest in the disputed domain name. Therefore, further to the unrebutted prima facie case made out by the Complainants, the Panel finds that all the circumstances point to consider that the Respondent does not have rights or legitimate interests in the disputed domain name. The second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2 of the WIPO Overview 3.0. The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainants’ HUGO BOSS mark in its entirety being identical to it, creating a likelihood of confusion or implied affiliation and the impression that the disputed domain name refers to one of the Complainants’ official stores or distributors, suggesting sponsorship or endorsement by the Complainants; (ii) the Complainants’ trademark is well known and the Complainants operate internationally including China, where the Respondent is located according to the Registrar’s verification; (iii) the Respondent has a prior history of previous cases under the UDRP regarding the registration and use in bad faith of other well-known trademarks belonging to third parties; (iv) the disputed domain name is inactive; (v) the Respondent’s reaction to the cease and desist letter was to attempt to sell the disputed domain name to the Complainants for a price exceeding the out-of-pocket costs related to the disputed domain name (USD 4,999); and (vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainants’ assertions of bad faith, choosing not to reply to the Complaint. Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the well-known trademark HUGO BOSS is so obviously connected with the Complainants that, by definition, the registration of the disputed domain name was made in opportunistic bad faith, targeting the Complainants’ trademark with the intention of obtaining a free ride on its established reputation. Further, the inactive use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding (section 3.3 of the WIPO Overview 3.0), and the circumstances that the Respondent’s attempted to sell the disputed domain name to the Complainants and the Respondent’s involvement in previous UDRP cases lend weight to a finding of bad faith in the sense of the examples given by the Policy, paragraph 4(b)(i) and paragraph 4(b)(ii), respectively. All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainants have met the burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 Reyes Campello Estebaranz 1 See Hugo Boss Trade Mark Management GmbH & Co. and Hugo Boss AG v. Brett Fuller,WIPO Case No. D2018-0308; Hugo Boss Trade Mark Management GmbH & Co. and Hugo Boss AG v. Crece Fairons,WIPO Case No. D2015-2066; Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin / Personal, Loung Dinh Dung,WIPO Case No. D2011-0564; Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Xu Feilong,WIPO Case No. D2016-2455; Hugo Boss AG v. Guan Jing, Lin Jing, li xiaoyong,WIPO Case No. D2012-1690; HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Wang Hui,WIPO Case No. D2016-2143; and Hugo Boss Trade Mark Management GmbH & Co. KG, Hugo Boss AG v. Xu Xiaobei,WIPO Case No. D2016-2456.
Sole Panelist
Date: October 22, 2020
Full & Egal Universal Law Academy