WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. 邱子皓/Qiu Zihao
Case No. D2014-2239
1. The Parties
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.
The Respondent is 邱子皓/Qiu Zihao of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <hugoboss.商城> is registered with Beijing Guoxu Network Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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.
On January 5, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 8, 2015, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on January 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2015.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 16, 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.
A. Language of the Proceeding
The Complainant has requested that English be recognized as the language of the proceeding. The Complainant submits that it has not been possible to identify the registration agreement for the disputed domain name and thus is unable to assess the language of the proceeding on that basis. However, the Complainant bases its request on the assertion that the disputed domain name will be used on an international level where English is the common language. Thus, the Complainant asserts that the Respondent has sufficient knowledge of the English language to understand this proceeding. Furthermore, the Respondent registered the disputed domain name by using an identical form and Latin characters of the Complainant’s trademark. This should be considered as an indication that English could be understood by the Respondent. If the Complainant were required to submit all the documents in Chinese, the proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
A copy of the Complaint was provided to the Respondent in English and the Complainant has offered to allow the Respondent to respond in Chinese. The Center has notified the Complaint to the Respondent in both Chinese and English. The Respondent has not commented regarding the language of the proceeding. Thus the Respondent’s default is not due to a lack of understanding of the language of the proceeding. Further, the second-level domain of the disputed domain name was registered in ASCII characters using the Roman alphabet, which is used by English speakers.
Taking the foregoing into account, the Panel concludes that that English should be the language of the proceeding.
4. Factual Background
The Complainant is an international company, founded in 1924 and operating in the premium and luxury segment of the global apparel market as the Hugo Boss Group. The Hugo Boss Group is headquartered in Metzingen, Germany. The Complainant’s brand name HUGO BOSS is protected as a trademark in several countries and regions around the world, including China. The Complainant provided evidence of various registrations for HUGO BOSS (the “HUGO BOSS marks”) in Annex 4 to the Complaint. The evidence shows that the Complainant’s registrations of the HUGO BOSS marks began at least as early as 1983. The Complainant is also the owner of websites at numerous domain names based on the HUGO BOSS marks. The Complainant offered evidence of its ownership of these domain names in Annex 5 to the Complaint.
The Respondent is 邱子皓/Qiu Zihao of Shanghai, China. The disputed domain name <hugoboss.商城> was registered on August 12, 2014.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s HUGO BOSS marks. The Respondent has no rights to or legitimate interests in the disputed domain name. The Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddys' Antiques, WIPO Case No. D2000-0004. Insofar as the Respondent has not responded, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Hugo Boss Group was founded in 1924 and operates in the premium and luxury segment of the global apparel market, focusing on the development and marketing of premium fashion and accessories for men and women. The Complainant operates several brands marketed under the HUGO BOSS marks, including Boss, Boss Orange, Boss Green and Hugo. The Complainant asserts that it is a market leader and is one of the most profitable apparel manufacturers in the world, with almost 12,500 employees and net sales of EUR 2.4 billion in fiscal year 2013. As stated above, the Complainant is the registered owner of numerous HUGO BOSS marks in a number of jurisdictions. The record shows the Complainant owned rights in the HUGO BOSS marks before the disputed domain name registration. The Panel finds that the HUGO BOSS marks are distinctive and well-known by the public as indicating the Complainant’s goods, and that the Complainant has rights in the HUGO BOSS mark. Previous UDRP panels have made similar findings. See Hugo Boss AG v. Guan Jing, Lin Jing, li xiaoyong, WIPO Case No. D2012-1690; HUGO BOSS A.G. v. LukcyLukes a.k.a. LUCKYLUKES.COM a.k.a. David Lie, WIPO Case No. DAS2000-0001; Hugo Boss A.G. v. Robert F. Walsh, WIPO Case No. D2000-1135.
The Complainant asserts that the disputed domain name is confusingly similar to its HUGO BOSS marks. The Panel agrees. The disputed domain name incorporates the HUGO BOSS mark in its entirety. It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227 (“In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.”); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The addition of the “.商城” suffix is insufficient to overcome a finding of confusing similarity. In determining whether a domain name is identical or confusingly similar to a complainant’s mark, UDRP panels have typically disregarded the generic Top-Level Domain (“gTLD”) or country code Top-Level Domain (“ccTLD”) portion of the URL address. See Yahoo! Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Moataz Mohsen, YAHO, WIPO Case No. DME2014-0003. Further, “商城” is the Chinese word for “shop”, which is a generic term. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term “Hugo Boss”. A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once such a prima facie case is made, the burden of demonstrating rights or legitimate interests in the domain name shifts to the respondent. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that the Complainant has successfully presented a prima facie case which the Respondent has not rebutted. The Respondent filed no response. Without a response, there is nothing in the case file that indicates that the Respondent has a right or legitimate interest in the disputed domain name. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the disputed domain name.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As discussed above, the Complainant’s HUGO BOSS marks are distinctive and famous. Given this, the Panel finds that the Respondent was aware of or should have been aware of the Complainant’s rights in the HUGO BOSS marks when registering the disputed domain name. The record shows that the Complainant owned trademark rights in the HUGO BOSS marks that predate creation of the disputed domain name and that the disputed domain name contains the Complainant’s mark in its entirety. Further, there is no evidence that the Respondent has any rights in the term “Hugo Boss”. Where a respondent chooses to incorporate a well-known mark into a domain name without authorization, “the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that the Respondent has no legitimate interest in this case.” General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Further, where the mark is well known and famous, a trader would not legitimately choose it, “unless seeking to create an impression of an association” with the mark’s owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent has not offered any argument to show this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that is was chosen with the Complainant’s mark in mind. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. The Panel finds that the Respondent registered the disputed domain name in bad faith.
The Complainant submits that the Respondent is using the disputed domain name in bad faith, as it was registered to prevent the Complainant from acquiring a corresponding domain name utilizing its own trademark. The Panel agrees. There is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. Further, although the disputed domain name does not resolve to an active website, such passive holding can be considered as a use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, supra; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Moreover, the Panel finds that the Respondent’s bad faith is evidenced by the fact that the Respondent chose a domain name that contains the Complainant’s HUGO BOSS mark in its entirety. As discussed above, given the fame of the Complainant’s HUGO BOSS marks, the most-likely explanation for the Respondent’s inclusion of the HUGO BOSS mark is to trade off of the Complainant’s good-will.
In light of the foregoing, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Thus, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <hugoboss.商城> be transferred to the Complainant HUGO BOSS AG.
Kimberley Chen Nobles
Date: March 2, 2015