Complainants are Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG both of Metzingen, Germany (hereinafter jointly referred to as “Complainant”), represented by Dennemeyer & Associates S.A., Germany.
Respondent is Kathrin Ledford Kathrin Ledford of Salt Lake City, United States of America.
The disputed domain name <hugobossonline.nl> (the “Domain Name”) is registered with SIDN through Domain Robot.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2016. On December 6, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On the same date, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant (as “Kathrin Ledford Kathrin Ledford”) and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). Complainant filed an amended Complaint on December 16, 2017.
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 20, 2016. In accordance with the Regulations, article 7.1, the due date for Response was January 9, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2017.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on January 16, 2017. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
The HUGO BOSS Group, of which Complainant forms part, was founded in 1924 and is one of the market leaders in the premium and luxury segment of the global apparel market. The group focuses on the development and marketing of premium fashion and accessories for men and women and is one of the most profitable listed apparel manufacturers in the world.
The brand world of HUGO BOSS comprises the collections of 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.
Complainant HUGO BOSS Trade Mark Management GmbH & Co. KG is, inter alia, holder of:
- the European Union Trade Mark HUGO BOSS, registered on 31 March 31, 2008, registration number: 000049254, for goods and services in classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 35 and 42;
- the European Union Trade Mark HUGO BOSS, registered on November 28, 2012, registration number: 006645204, for goods in class 16;
- the International Trademark HUGO BOSS, registered on June 3, 1977, registration number: 430400, for goods in classes 18, 24 and 25, designating inter alia the Benelux;
- the International Trademark HUGO BOSS, registered on April 10, 1987, registration number: 513257, for goods in classes 9, 14, 16, 18, 25, 28 and 34, designating inter alia the Benelux; and
- the International Trademark HUGO BOSS, registered on May 31, 1995, registration number: 637658, for goods in classes 29, 30, 31, 32 and 33, designating inter alia the Benelux
(hereinafter jointly referred to as the “Trademark”). According to Complainant, the Trademark is well-known and enjoys a worldwide reputation.
Complainant HUGO BOSS AG owns and operates websites linked to numerous domain names incorporating the Trademark.
The Domain Name was registered on February 27, 2016. The Domain Name resolves to a website offering for sale Complainant’s goods. According to Complainant, such website re-creates or imitates the design of Complainant’s original website at “www.hugoboss.com”.
Complainant bases its Complaint on the Trademark.
The Domain Name is identical or confusingly similar to the Trademark
Complainant contends that the Domain Name is confusingly similar to the Trademark. Complainant argues that many panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark.
Complainant argues that the Domain Name is made up of the Trademark and the descriptive term “online”. Adding a descriptive term to the Trademark in the Domain Name does not influence the similarity between the Trademark and the Domain Name. Complainant also contends that the country code Top-Level Domain “.nl” should be disregarded under the confusing similarity test, because it does not have any impact on the overall impression.
No rights to or legitimate interests in the Domain Name
Complainant contends that Respondent has no rights to or legitimate interests in the Domain Name.
According to Complainant, Respondent has not been authorized by Complainant to register and use the Trademark, or to seek registration of any domain name incorporating the Trademark or the company name of Complainant(’s Group).
In addition, Complainant argues that given the impressive number of trademarks and domain names registered by Complainants and their fame, goodwill and notoriety, there are no imaginable circumstances under which Respondent could legitimately use the Domain Name.
The Domain Name has been registered and is being used in bad faith
Complainant contends that Respondent registered the Domain Name in bad faith and is using the Domain Name in bath faith.
Complainant argues that Respondent knew or should have known of the Trademark. According to Complainant, referring to the arguments mentioned above, it is unlikely that Respondent was unaware of Complainant when it registered the Domain Name, especially since the Trademark is well-known and enjoys a worldwide reputation.
In view of the website to which the Domain Name resolves, where clothing articles under the name HUGO BOSS are offered for sale without authorization of Complainant, it is impossible to infer that Respondent was not aware of Complainant at the time of registration of the Domain Name, according to Complainant.
Complainant further contends that Respondent also uses the Domain Name in bad faith. Respondent has no license or permission to use the Trademark and no actual or contemplated bona fide or legitimate use of the Domain Name can reasonably be claimed. The website to which the Domain Name resolves re-creates or imitates the design of Complainant’s original website “www.hugoboss.com”. It is obvious that the Domain Name has been registered to create confusion and mislead the Internet user into believing that Complainant and Respondent are affiliated or that Complainant endorses this website.
Complainant submits that this is not the first time that the Trademark is the object of abusive domain name registrations, and that several previous panels have found for Complainant in similar cases.
Complainant has submitted documents, including references to panel decisions, in support of the above arguments.
Respondent did not reply to Complainant’s contentions.
As Respondent has not filed a response, the Panel shall rule based on the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent; even through the use of the “contact us” form on the website to which the Domain Name resolves.
Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Name must meet three cumulative conditions:
a. the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. Respondent has no rights to or legitimate interests in the Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows.
Complainant has based its Complaint on the Trademark. Complainant has submitted a copy of its trademark registration demonstrating that it is the holder of the Trademark. The Trademark is protected under Dutch law. Therefore, the Panel assumes the validity of the Trademark and will review the Complaint on that basis.
It is established case law that the Top-Level Domain “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other hand (see Caterpillar Inc. v. H. van Zuylen Materieel, WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Name includes the entire Trademark together with the generic and descriptive term “online”. The addition of this generic and descriptive term to the Trademark in the Domain Name does not influence the similarity between the Trademark and the Domain Name. The Domain Name is textually, visually and phonetically nearly identical to the Trademark.
The Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met.
Complainant alleges that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out in Section 5.A above. The registration of the Trademark precedes the registration of the Domain Name. Furthermore, it is uncontradicted in the case that Complainant has not granted any license or otherwise authorized Respondent to use the Trademark or to apply for any domain name incorporating the Trademark. Further, no commercial relationship exists between Complainant and Respondent, nor does the website to which the Domain Name resolves disclose such lack of relationship. The Panel further notes that in these circumstances a website which effectively copies Complainant’s website cannot constitute rights to or legitimate interests in the Domain Name.
The Panel is satisfied that Complainant has fulfilled its obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name. As a result of its failure to submit a response, Respondent has not refuted the arguments of Complainant and shown rights to or legitimate interests in the Domain Name. The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has a right to or legitimate interest in the Domain Name.
The Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations.
Considering the apparent well-known status of the Trademark and prior rights of Complainant, the fact that Complainant has never licensed or otherwise authorized Respondent to use the Trademark in a domain name and the nature of the website to which the Domain Name resolves, the Panel is of the opinion that Respondent knew or should have known of the Trademark at the time of registration of the Domain Name. Also, the use of the Domain Name for a website that re-creates and imitates Complainant’s official website amounts to registration and use of the Domain Name in bad faith.
Previous panels have found that the incorporation of a well-known trademark in a domain name without plausible explanation is in itself an indication of bad faith (see Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 in which the panel stated: “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”).
On all of the above grounds, the Panel finds that the requirement of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have been met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <hugobossonline.nl>, be transferred to Complainant.
Remco M.R. van Leeuwen
Date: January 31, 2017