WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. I Market and Design LLC
Case No. D2014-2064
1. The Parties
1.1 The Complainant is HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG, of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
1.2 The Respondent is I Market and Design LLC, of Tampa, Florida, United States of America ("United States"), represented internally.
2. The Domain Name and Registrar
2.1 The disputed domain name <boss.black> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2014. On November 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 25, 2014, 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.
3.2 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").
3.3 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 December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 13, 2015. 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.
3.5 On November 24, 2014, before the Center formally notified the Respondent of the Complaint, the Respondent sent an email to the Center purporting to respond to the allegations made in the Complaint. On reviewing the case file in this matter the Panel formed the view that the Respondent's email of November 24, 2014 was "so procedurally and substantively inadequate that it [could] not be treated as a Response for the purposes of these proceedings".1 Nevertheless the Panel also was concerned that the Respondent may have misunderstood that this email could constitute a formal Response in these proceedings. Accordingly on January 19, 2015, the Panel issued a Procedural Order pursuant to paragraphs 10 and 12 of the Rules, in which the Panel expressed its concerns about the adequacy of the Respondent's email (insofar as it is to be treated as a Response) and permitting the Respondent to put in a further submission, responding to the allegations set out in the Complaint. A further submission (characterized as the Respondent's Response) was then filed by the Respondent on January 20, 2015.
4. Factual Background
4.1 The Complainants (hereafter, just referred to as the Complainant) form part of the "Hugo Boss" group of companies based in Germany. "Hugo Boss" is a well known fashion and accessory group founded in 1924 and with worldwide net sales in 2013 of EUR 2.4 billion.
4.2 As well as conducting business under the "Hugo Boss" brand, it promotes certain collections under names that combine the word "Boss" with colours, such as "Boss Orange", "Boss Green" and "Boss Black". "Boss Black" has been used in connection with menswear since 1970 and womenswear since 2000. It is the largest of these collections, said to represent 68% of the Complainant's sales.
4.3 In addition to various trade marks for the terms "Hugo Boss" and "Boss", the Complainant (and in particular Hugo Boss Trade Mark Management GmbH & Co. KG) is also the owner of various trade marks around the world that comprise the term "Boss Black". These include:
(i) Community Trade Mark No 003405149 for the word mark BOSS BLACK filed on October 13, 2003 and proceeding to registration on March 3, 2005 in classes 3, 18, 24, 25, 27 and 28; and
(ii) International Trade Mark registration No 823205 for the word mark BOSS BLACK filed on February 14, 2004 in class 25 designating 11 countries. It appears to have proceeded to grant in all of these countries, including the United States (albeit with an amended specification) on July 18, 2003.
4.4 The Respondent appears to be a limited liability corporation, based in the state of Florida in the United States.
4.5 The Domain Name was registered on August 30, 2014.
4.6 As at the date of the Complaint the Domain Name was used to redirect Internet users to a web page operating from the domain name <domainnamesales.com> and which contained the text: "Boss.black may be available for purchase. Inquire today!" Below that text was a web form headed "GET A FREE PRICE QUOTE FOR BOSS.BLACK", inviting the Internet user to enter a name, phone number and email address and message. This web page continues to be displayed at the date of this decision.
5. Parties' Contentions
5.1 The Complainant refers to its business and marks and claims that the Domain Name is identical to those marks.
5.2 The Complainant contends that the factors set out in paragraph 4(c) of the Policy do not apply in this case and that given the Complainant's mark and fame "there [are] no imaginable circumstances under which the Respondent could legitimately use the [Domain Name]". It, therefore, contends that the Respondent has no rights or legitimate interests in the Domain Name.
5.3 The Complainant refers to the web page operating from the Domain Name, which is said to show that the Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs. It also contends that the Domain Name was registered to create confusion and mislead Internet users into believing that the Respondent's website is in some way connected with the Complainant.
5.4 The Respondent did not supply a formal Response in these proceedings within the time period provided by the Rules. However, as has already been described above, the Panel issued a Procedural Order permitting it to file a submission out of time that responded to the Complaint.
5.5 In that submission the Respondent confirmed its identity as "I Market and Design LLC". Further Mr. Goebel of the Respondent claimed as follows:
"[The Domain Name] has not relations to the [C]omplainant and is entirely directed towards the black community and is more race related than anything. These are meant for future projects which some are geared towards my children's future careers (They are Bi Racial and I want them to be proud of their Origins)".
5.6 Mr. Goebel further contends:
"At No time, did I even consider that there was any correlation or confusion with the mark of HUGO BOSS".
5.7 So far as the use that has been made of the Domain Name is concerned, the Respondent contends that the Domain Name together with other domain names of the Respondent have been:
"simply listed on a Domain platform that allows people to inquiry on individual domain names, and where the domains are simply listed for organizational purposes".
5.8 The Respondent also invites the Panel to conduct searches in respect of a number of other domain names using the ".black" generic Top-Level Domain ("gTLD"), which the Respondent has registered and are said to demonstrate the Respondent's true intentions in registering these domain names.
6. Discussion and Findings
6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
6.2 The only difference between the Domain Name and the BOSS BLACK trade marks relied upon by the Complainant is that instead of the space between the two words in the mark there is a "period" or "full stop" symbol. It is not possible for a domain name to incorporate a space. Accordingly the Panel finds that the Domain Name is identical (alternatively confusingly similar) to a mark in which the Complainant has rights and that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.3 The Respondent appears in this case to be contending that the Domain Name was registered for some use that relies upon a generic or descriptive reading of the words "boss" and "black" in combination. So far as the word "black" is concerned the claim appears to be that this will be used in a manner which reflects the use of that word to designate someone of darker skin colour by reason of some degree of sub-Saharan African descent.
6.4 The assertion appears to be not that this is how Internet users would interpret any domain name that incorporates this gTLD2 but that this is simply the intention of the Respondent in this case.
6.5 The problem here is that this assertion is extremely vague. The Respondent contends that this and other domain names "are meant for future projects which some are geared towards my children's future careers", but it is unclear what exactly this means. It is a statement that raises more questions than it answers. What are these projects? How might they sensibly be directed to Mr. Goebel's children's "future careers"? Is the claim that this is a commercial project or a noncommercial project? If it is a noncommercial project, why has this been registered by a corporate entity?
6.6 The Panel rejects the Complainant's contention that there "[are] no imaginable circumstances under which the Respondent could legitimately use the [Domain Name]". Nevertheless, regardless of whether such legitimate use is "imaginable", it is simply unclear what the alleged use will be in this case.
6.7 In the absence of such an explanation, it is not possible to conclude that there is a "legitimate noncommercial or fair use" being made of the Domain Name within the meaning of paragraph 4(c)(iii) of the Policy. Further, the Respondent has also not suggested and has not brought forward any evidence that it has engaged in "demonstrable preparations" to use the Domain Name "in connection with a bona fide offering of goods or services" within the meaning of paragraph 4(c)(i) of the Policy.
6.8 The examples of rights or legitimate interests set out in paragraph 4(c) of the Policy are non-exclusive and it is the Complainant that bears the burden of proof in establishing the various elements of the Policy. Nevertheless, the absence of any proper description of the Respondent's intended use is something that the Panel can take into account when assessing whether the Complainant has made out its case in this respect (as to which see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
6.9 Given this and bearing in mind the Panel's findings so far as bad faith registration and use are concerned (set out below), the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has therefore made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.10 If the Respondent was not aware of the Complainant's mark at the time that the Domain Name was registered, it would be difficult to establish bad faith registration. However there is a clear and credible assertion on the part of the Complainant that given the fame of its marks and business, the Respondent would have had that knowledge when it registered the Domain Name. The Respondent does not deny this. It merely asserts that the relevant person did not "consider that there was any correlation or confusion with the mark of HUGO BOSS". In the circumstances, the Panel holds that the Respondent was aware of the Complainant's rights.
6.11 Of course, in a case where a mark comprises ordinary English words, merely showing a respondent's knowledge is unlikely to be sufficient by itself. The complainant must also establish that there was some intent to take unfair advantage of the complainant's right (see for example Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230). Once again this brings the analysis back to what was the Respondent's intent in this case.
6.12 Although the words "boss" and "black" are ordinary English words, their combination is somewhat unusual. The Respondent does refer to other domain names that it claims to have registered at about the same time as the Domain Name and which combine other English words with the term "black". The Respondent identifies twelve such domain names and there are three in particular (i.e., <powerful.black>, <rich.black> and <selfmade.black>) that might be said to be conceptually similar to the Domain Name. In many cases such material can constitute powerful supporting evidence of a claim that a disputed domain name was registered with some descriptive purpose in mind. However, the difficulty is that in this case there is no coherent description of what that use might be.
6.13 Further, there is the undisputed fact that since registration the Domain Name has been used in connection with a webpage that strongly suggests that the Respondent was open to offers as to the Domain Name's sale. The Respondent appears to claim that this is not significant because the Domain Name was "simply listed on a Domain platform that allows people to inquiry on individual domain names, and where the domains are simply listed for organizational purposes". However, this is a wholly inadequate response. The "platform" did indeed allow people to make an "inquiry on individual domain names", but the form of "inquiry" that this "platform" expressly sought was one related to the Domain Name's possible sale. This is apparent not only from the text on that page, but the fact that to submit such an inquiry one must click on a button with the text "Get Free Price Quote". Further, if as the Respondent contends the Domain Name was registered in connection with a "future project" for Mr. Goebel's children, why was the Respondent seeking inquiries at all? Also there no explanation of the alleged "organizational purposes" to which the Respondent refers. Once again the Respondent's explanation is not coherent.
6.14 Given this, the Panel concludes on the balance of probabilities that regardless of the purpose for which certain other of the Respondent's ".black" domain names may have been registered, the Domain Name was registered both with knowledge of the Complainant's use of the term "Boss Black" and with the intention to take unfair advantage of the reputation and marks that the Complainant had in that name (whether that be by sale to the Complainant or its competitors, or otherwise).
6.15 In the circumstances, the Panel concludes that the Domain Name was registered and used in bad faith and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy
7.1 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 <boss.black> be transferred to Hugo Boss AG.
Matthew S. Harris
Date: January 22, 2015
1 This language is quoted from the January 19, 2015 Procedural Order, discussed infra.
2 In this respect see Response to Question 18 of the relevant registry's application for this gTLD which states "It is important to note that the intention of the TLD is to be associated and used for association with the color black, and not with any social, cultural, or ethnic connotations".