WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hugo Boss Trade Mark Management GmbH & Co. KG v. Domain Admin / Personal, Luong Dinh Dung
Case No. D2011-0564
1. The Parties
The Complainant is Hugo Boss Trade Mark Management GmbH & Co. KG of Metzingen, Germany, represented by Baker & McKenzie (Vietnam) Ltd., Vietnam.
The Respondent is Domain Admin / Personal, Luong Dinh Dung of Moergestel, the Netherlands, and of Hanoi, Vietnam, respectively.
2. The Domain Name and Registrar
The disputed domain name <highboss.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2011. On March 29, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On March 30, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 Complainant on April 1, 2011, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 13, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on May 16, 2011. 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 is a well-known leading fashion company, founded in 1924 in Germany. It manufactures, markets and retails clothing, shoes and other accessories, as well as fragrances, skincare products, watches, eyewear and kidswear under its BOSS and HUGO BOSS trade marks. It is present in 110 countries with over 9,500 people in its employ worldwide. It has also established websites that resolve to domain names which comprise the BOSS and HUGO BOSS trade marks including “www.hugoboss.com” (the “Hugo Boss website”). The Hugo Boss website provides information regarding the Complainant and its products and services, and also allows customers to purchase the Complainant’s products online.
The Complainant has trade mark registrations worldwide for the marks BOSS and HUGO BOSS, alone or in combination with other words or device elements. The Complainant claims to have, at the time of filing the Complaint, 2,388 trade mark registrations for BOSS and 1,759 trade mark registrations for HUGO BOSS covering a variety of goods and services including clothing, footwear and headgear. In Vietnam, the BOSS trade mark is protected under the Complainant’s International registration No. 456092.
The disputed domain name was registered on March 17, 2009.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to its BOSS and HUGO BOSS trade marks, for these reasons:
(i) the main element in the disputed domain name is “highboss” which is a word comprising eight letters wherein the letters “H”, “G” and “BOSS” appear in the same order as HUGO BOSS;
(ii) the most distinctive part of the Complainant’s trade marks is BOSS which is the way in which the Complainant’s trade marks are actually identified in fact;
(iii) the disputed domain name directly incorporates the Complainant’s BOSS mark as the lead term, with the addition of a descriptive term. The visual impression of the disputed domain name is strongly associated with the Complainant’s BOSS and HUGO BOSS trade marks. The addition of the word “high” in the disputed domain name does not serve to dispel the likelihood of confusion with the Complainant’s marks. The word “high” is a weak element, being non-distinctive and descriptive in nature;
(iv) the Vietnam Intellectual Property Research Institute (the “VIPRI”), a subordinate agency under the Ministry of Science and Technology of Vietnam, issued a Conclusion of Assessment in which it concluded that the “HIGH BOSS” sign was confusingly similar to the BOSS trade mark which is a protected mark of the Complainant in Vietnam. The VIPRI was of the view that the word “high” was a weak element in the “HIGH BOSS” sign, being descriptive in nature; and
(v) the addition of the generic TLD “.com” does not serve to dispel Internet user confusion.
In relation to point (iv) above, the Complainant explained that one of the main functions of the VIPRI is to conduct intellectual property assessment for enforcement of intellectual property rights in Vietnam. The Conclusion of Assessment issued constitutes evidence for the purposes of enforcement proceedings in Vietnam.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name and this is supported by the following:
(a) the Complainant’s BOSS and HUGO BOSS trade marks were used and became famous long before the creation of the disputed domain name;
(b) the Respondent has no connection or affiliation with the Complainant and has not been licensed by the latter to use the BOSS and HUGO BOSS marks in a domain name or in any other manner;
(c) the BOSS trade mark enjoys worldwide reputation with regard to fashion products and as such, it is not a mark that other traders could legitimately adopt other than for the purpose of creating an impression of association with the Complainant; and
(d) there is no evidence to suggest that the Respondent has ever used, made preparations to use, the disputed domain name, or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has not been commonly known by the disputed domain name nor does it operate a business entity that utilizes the disputed domain name.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Respondent has sought to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BOSS and HUGO BOSS marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service thereon. The front page of the Respondent’s website had, at one point, showcased three photos of shoes. Some of the pages were, at the time of the filing of the amended Complaint, cached and could be traced on Google’s web cache. The Respondent also created a link to its website under the domain name <giaycao.com> (“the second website”). The Complainant believes the second website is also operated by the Respondent. The second website was being used to promote products bearing the term “HIGH BOSS”. The Complainant submitted in evidence a copy of a letter from the Respondent to the Complainant dated November 8, 2010, in which the Respondent confirmed that he would remove the term “HIGH BOSS” from the second website and from the website “www.highboss.com”, as requested by the Complainant. Although the Respondent had agreed to cease the use of the term “HIGH BOSS” in commerce and on its website bearing the disputed domain name, the Respondent stated that he was unable to cancel the disputed domain name as it belonged to another person. It is now apparent that this is completely untrue.
According to the Complainant, it can be concluded that the Respondent probably knew of the Complainant’s BOSS and HUGO BOSS trade marks when he registered the disputed domain name. The Respondent then used it in a way that competes with the Complainant’s business as it suggests to Internet users that there was a connection between the Complainant’s products and the Respondent’s product line, which does not exist.
Further, Complainant holds that there is substantial authority established by previous panel decisions that the registration of a domain name that is confusingly similar to a famous trade mark by an entity that has no relationship to that mark is itself evidence of bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has to demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark 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 or subsequently used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s trade mark rights in BOSS and HUGO BOSS are clear and these marks are certainly well-known marks in the fashion industry. The addition of the word “high” does not serve to distinguish the disputed domain name from the Complainant’s mark. Comparing the trade mark to the disputed domain name, the Panel notes that the disputed domain name replicates the trade mark but for the top-level domain “.com” and the replacement of “i” for “u” and “h” for “o”. The Panel also takes cognisance of the Complainant’s submission that the visual impression of the disputed domain name is strongly associated with the Complainant’s BOSS and HUGO BOSS trade marks.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. Paragraph 4(a)(i) of the Policy has been satisifed.
B. Rights or Legitimate Interests
The Panel is of the view that the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy prescribes a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent could have filed a Response to submit evidence to show any of the above and dispute the Complainant’s allegations, but failed or chose not to do so. The prima facie case established by the Complainant has therefore not been rebutted.
Consequently, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The evidence submitted by the Complaint in relation to the Respondent’s website does not spell out good faith on the Respondent’s part. In coming to its decision, the Panel gives some weight to the VIPRI’s Conclusion of Assessment in which the said agency concluded there was infringing use of the Complainant’s BOSS trade mark. The Panel accepts the Complainant’s allegation that the Respondent must have known of the Complainant’s famous BOSS and HUGO BOSS marks when it registered the disputed domain name, and that the use on the website in relation to men’s footwear (apparently termed “High Boss”) was with the aim of attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BOSS and HUGO BOSS trade marks.
It is also noteworthy that in the letter dated November 8, 2010, which NT & Partners Consultant Limited Company wrote on behalf of a Mr. Luong Dinh Dung, the owner of the “Giay cao High Boss stores”, (and who was subsequently identified as the registrant of the disputed domain name), it was asserted, as follows:
“Regarding the domain name ‘highboss.com’, as we mentioned in our previous letter, we are of the opinion that after removing the elements ‘HIGH BOSS’ and replacing it with the new trademark, the likelihood of confusion will no longer exist. In addition, our client is not the owner of this domain name. It belongs to another party that purchases products from our client. Therefore, the cancellation of the domain name ‘high.boss.com’ is beyond our control and we would only be able to request them to change the contents of such website. If Hugo Boss has a different view about this issue, please directly contact the domain name owner to resolve this issue according to the applicable laws; …”.
The Complainant has pointed out that the above statement is completely untrue. The Panel draws a negative inference from this dishonest statement and, based on the evidence submitted by the Complainant, concludes that the registration and use of the disputed domain name were in bad faith.
Consequently, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <highboss.com> be transferred to the Complainant.
Dated: May 30, 2011