WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hugo Boss A.G. v. Abilio Castro
Case No. DTV2008-0001
1. The Parties
The Complainant is Hugo Boss A.G., Metzingen, Germany, represented by Melbourne IT Corporate Brand Services AB, Sweden.
The Respondent is Abilio Castro, Tampa, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2008. On January 3, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 3, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was stated to be January 31, 2008. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 5, 2008.
The Center appointed Haig Oghigian as the sole panelist in this matter on February 13, 2008. 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
As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant, whose name is derived from the name of its founder, Hugo Boss, is an internationally recognized designer and manufacturer of high quality clothing and accessories. The Complainant has been in existence since 1948 in Germany and the BOSS Marks have since that time become recognized all over the world and is the owner of the trade name and trade mark HUGO BOSS.
The Complainant has registrations in over twenty countries, including the United States and Canada, for the trademark HUGO BOSS. The marks are registered for everything from clothing and accessories, footwear, headwear, leather goods, time pieces, jewelry, eye wear, personal care products, sporting articles, toys, tobacco products and other goods. Each mark is registered for a wide variety of goods and services.
The Respondent registered the domain name on September 22, 2005.
5. Parties’ Contentions
A. Complainant
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Complainant submits that it has support the mark throughout the years. Due to its heavy investment in the production, distribution and advertising of products and services that carry the name Hugo Boss, it has acquired the status of a well-known mark within the areas of clothing and fashion and is internationally recognized.
The Complainant argues that the domain name is identical to its HUGO BOSS mark because the domain name wholly incorporates the words “hugo boss”. The addition of the country code Top Level Domain (ccTLD) “tv” as a suffix does not have any impact on the overall impression of the dominant portion of the names “Hugo Boss” and is therefore irrelevant to determining the confusing similarity of the trademarks. The Complainant further alleges that anyone who sees the domain name is bound to mistake it for a name related to the Complainant. Due to the reputation of the HUGO BOSS mark there is a considerable risk that the trade public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name as it is not the Respondent’s business, trading name nor the trademark of the Respondent, neither did the Complainant license or authorize the Respondent to use the trademark HUGO BOSS in the domain name or in any other connection.
The Complainant further submits that the domain name was registered and is used in bad faith. It contends that as the Respondent, by demanding to enter into a business arrangement with a world renowned trademark holder, is holding the domain name to ransom.
B. Respondent
The Respondent did not submit a formal Response to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the policy requires that the complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to the trade mark; 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
Pursuant to paragraph 4(a)(i) of the Policy, a Complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which a Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.
It is established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D 2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.)
It is clear on the given evidence that the Complainant has a longstanding use of its name “Hugo Boss” and that it has registered trademarks that incorporate those words in many parts of the world, including the United States of America where the Respondent resides.
The subject domain name differs from the Complainant’s name and mark only by the addition of the country code top level domain “tv”. The Panel is satisfied that this clearly is identical or confusingly similar to the Complainant’s name and mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Respondent did not file a Response, and it makes no claim whatsoever of rights or legitimate interests in the domain name at issue.
The Panel is of the opinion that the Complainant has established on the balance of probabilities that the Respondent has no rights or legitimate interests in the domain name at issue.
The Complainant has no relationship with the Respondent and has not authorized the Respondent to use the domain name . There is no indication in the file that the Respondent is known under the disputed domain name.
Therefore, the Complainant has satisfied the requirement of paragraph 4 (a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In a letter dated June 25, 2007 (Complaint, Annex 5), an individual identifying himself as the Respondent’s Partner stated inter alia that the Respondent was a fan of Hugo Boss and that the domain name was purchased with the intention of gaining an opportunity to meet and work with a well respected international clothing company. It further stated that the intent was purely to capture the attention of the Complainant and be allowed the opportunity to discuss some ideas.
However this may be, registration of a domain name merely to “capture” a trademark owner’s attention does not of itself constitute a good faith basis for such registration. Rather, and particularly so in this case, it suggests the contrary, that the registration of the domain name was not bona fide. Furthermore, the domain name is apparently now being used to post sponsored links, from which revenue is presumably derived. This not only calls into question the already rather dubious explanation offered in the above letter for the initial registration, but also indicates that the domain name is now in effect being used to benefit from the obvious prospect for Internet confusion with the well-known HUGO BOSS mark. Nor is the Respondent assisted by its failure to file a Response in the present proceedings. The Panel has little hesitation in finding that the domain name was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has established bad faith as required by paragraph 4(a)(iii).
7. Decision
For all 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.
Haig Oghigian
Sole Panelist
Dated: February 27, 2008
Full & Egal Universal Law Academy