WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. houjianyong
Case No. D2015-2018
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 Jeffa Zhang, houjianyong, Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <houshiboss.com> (the "Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2015. On November 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2015 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 November 13, 2015.
On November 16, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 17, 2015, the Complainant confirmed its 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on December 22, 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.
4. Factual Background
The Complainants are part of the Hugo Boss Group which was founded in 1924. The Group is one of the market leaders in the luxury segment of the global apparel market. It is headquartered in Metzingen, Germany. It employs almost 13,000 employees and generated net sales of EUR 2.6 billion in 2014. The First Complainant owns the trade marks HUGO BOSS and BOSS. The trade marks are used in connection with perfumery and beauty products, spectacles, watches and jewelry, leather goods and accessories and clothing. The First Complainant has global trade mark registrations for the trade marks HUGO BOSS and BOSS including China in a variety of classes including classes 3, 9, 14, 18 and 25. The earliest trade mark for HUGO BOSS submitted in evidence dates back to 1977 and the earliest trade mark registration for BOSS dates back to 1975.
The Second Complainant owns and operates domain names and websites incorporating the HUGO BOSS and BOSS trade marks including <boss.co.uk>, <boss.com>, <hugo.com>, <hugoboss.com> and <hugoboss.co.uk>. Unless otherwise stated, both Complainants will be referred to as the Complainant.
The Domain Name was registered on December 9, 2003.
It appears from the Complaint that the Complainant has had or is having disputes over the name "Houshi Boss" with a third party. However it is not clear if the third party is related to the Respondent. The Domain Name does not appear to be connected to an active website at the time of the writing of the decision.
5. Parties' Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Name should be transferred.
Identical or Confusingly Similar
The sign "houshiboss" is confusingly similar to the Complainant's HUGO BOSS trade mark. Both signs share an identical ending made up of the four letters "boss". Visually the Respondent's sign share three identical letters out of four namely, "h", "o" and "u" with both signs starting with the letter "h". The Respondent's sign shares seven out of the eight letters of the Complainant's trade mark. Phonetically, "houshiboss" is made out of three syllables with the first and last syllables identical to the complainant's HUGO BOSS – "hou/hu" and "boss/boss".
The sign "houshiboss" is confusingly similar to the Complainant's BOSS trade mark. The BOSS sign in its entirety is found in the ending of the Respondent's sign. The likelihood of confusion is further enhanced because the Complainant's trade marks HUGO BOSS and BOSS have been considered to be internationally well known in other UDRP decisions.
The similarity and likelihood of confusion between the two marks has been recognized in other proceedings with the Complainant having won 13 proceedings out of 17 filed against the trade mark HOUSHI BOSS owned by the company "Shenxiang" in class 18 and 25. All the word marks depicted in Latin for HOUSHI BOSS or HOUSHI BOSS including various figurative trade marks were declared invalid in classes 18 and 25. The only exceptions to these successful proceedings were in relation to three trade marks which included portraits and a Chines transliteration of HOUSHI BOSS - these were trade mark Nos 1700676, 3786459 and 4567523.
The successful actions led to the Respondent removing its business from the online shopping websites "www.jd.com" and "www.tmall.com". The Respondent's sales activity on "www.taobao.com" has also decreased significantly.
Rights or Legitimate Interests
Both the Complainant and the Respondent are in the fashion industry. The Complainant has a worldwide reputation and is one of the most profitable listed apparel manufacturers in the world. The Respondent being active in the same industry could not have been unaware of the Complainant. The Respondent is not commonly known by the Domain Name. The names, "Jeffa Zhang" of a company "houjianyong" does not coincide in any way with the Domain Name.
If the Respondent were to argue that "houshi" refers to the name of an individual, there are no imaginable circumstances in which the Respondent could have used a domain name which included the word "boss" which is the most dominant and well known trade mark of the Complainant.
The Complainant has never licensed or otherwise authorized the Respondent or any third party to use its trade marks or to apply for any domain name incorporating the trade mark BOSS.
Registration and Use in Bad Faith
The Hugo Boss Group is well-known and the Respondent must have had knowledge of the Complainant´s rights when he registered the Domain Name. The Domain Name is connected to a website which is obviously aimed at causing confusion with HUGO BOSS and BOSS as the Respondent is using the sign "houshiboss" in an identical font and is also reproducing in a nearly identical manner the Complainant's corporate identity (this is illustrated by a photograph of what appears to be a shop front of the Complainant's shop and a signboard which may be above a shop of the Respondent). This evidences an attempt to wrongly lead the consumer and attract for commercial gain Internet users who could think it will lead to an official website managed by the Complainant.
The Respondent is making a commercial use of the Domain Name which was registered primarily for the purpose of disrupting the business of a competitor and with an intentional attempt to attract for commercial gain, Internet users to the Respondent's web site 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following three elements, namely that:
(i) The Domain Name is identical or confusingly similar to a 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and in an email to the Center on November 6, 2015 that the language of the proceeding should be English. The Complainant contends that English is the main spoken language in the world and the main business language in the field of fashion and the Internet. The Respondent has registered in the Domain Name in Latin characters which is identical in form as the Complainant's trade mark and therefore indicates that the Respondent understands English. The Complainant has in the past few months been victim of a lot of domain name registrations imitating or reproducing identically their main trade marks HUGO BOSS, BOSS and HUGO. Except for domain names with the <.mx> extension, all of the complaints have been filed in English. The language of the proceeding should be English to "create unity" in the ongoing action against third parties using the Complainant's trade marks. The Complainant is based in Germany, where Chinese is nor a spoken or common language.
The Panel accepts that the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese especially in circumstances where the Respondent has elected not to file a Response to the proceeding. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent cannot avail himself of the excuse that he had no knowledge or did not understand that proceedings have been filed against him. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has clearly established rights to the trade mark HUGO BOSS and BOSS and that these marks are well known. This trade mark is not identical to the Domain Name. The question is whether the marks are confusingly similar to the Domain Name. The test for confusing similarity under the UDRP as stated in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") is as follows:
"The threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy the test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusingly similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trade mark with the alphanumeric string in the domain name. Whilst each case must be judged on its own merits, circumstances in which a trade mark may not be recognizable as such within a domain name may include where the relied upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name."
The WIPO Overview 2.0 also makes it clear that the applicable top-level suffix in the domain name, in this case ".com", is to be disregarded under the confusingly similarity test. The content of the website is also typically disregarded in the threshold assessment of risk of confusingly similarity under the first element of the UDRP.
The Complainant has attempted to bolster its arguments under this head by relying on third party findings on confusing similarity between HUGO BOSS, BOSS and "houshiboss". However it has not specified which tribunal it is referring to other than it resulted in 13 proceedings out of the 17 filed against HOUSHI BOSS trade marks in classes 18 and 25 in an unspecified territory owned by a third party company called "Shenxiang" being successful. It appears that these marks were declared invalid. No information has been provided as to the basis of such findings, when they were made, whether there are pending appeals or if "Shenxiang" is related to the Respondent. Given the location of the Respondent and the name "Shenxiang", the Panel would guess that these are invalidity proceedings filed in China. These allegations have done nothing to assist the Complainant in its case as they are vague and have not been substantiated by any supporting evidence for the Panel to rely on such an argument.
In any event, even if the necessary evidence to substantiate the allegations were submitted, the Panel notes that these arguments are usually irrelevant under this head. The test under national and regional including Chinese trade mark law in connection with the question of likelihood of confusion is for the most part different from the UDRP test which is a one-step test i.e. a comparison between the trade mark and domain name itself to determine likelihood of confusion. There is no regard to the goods or services in connection with which the respective marks are applied as in the case of trade mark law.
Applying the test under the UDRP, the Panel has to consider the likelihood of confusion when comparing HUGO BOSS / BOSS and "houshiboss" as the ".com" suffix may be disregarded in this case.
Comparing BOSS and "houshiboss", "houshiboss" contains the Complainant's BOSS trade mark in its entirety but also incorporates the word "houshi". The word "houshi" appears to be an invented word without dictionary significance in the English language. It is likely to have trade mark significance as it is or was registered and used as part of a trade mark by a third party which may or may not be related to the Respondent. The question is whether the addition of the word "houshi" to BOSS eliminates the visual, aural and conceptual impression that the Domain Name is associated with the Complainant's trade mark. UDRP panels have consistently found that the Respondent's inclusion of a third party's trademark in its domain name does not eliminate the visual impression that the disputed domain name is associated with the Complainant's trademark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793. In this case, the Panel is of the view that the mark BOSS has distinctive significance independently of "houshiboss" as a whole and the overall impression produced by the Domain Name renders it is confusingly similar to the Complainant's BOSS trade mark on the part of Internet users.
Comparing HUGO BOSS and "houshiboss", "houshiboss" contains the "boss" element of HUGO BOSS. Taken on its own the elements, "houshi" and "hugo" would not be considered similar, however the comparison of the Domain Name and trade mark as a whole especially given the independent distinctive significance of the element BOSS, renders the Domain Name to be confusingly similar to the HUGO BOSS trade mark as well. The Complainant has established the first element in the UDRP test. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non- commercial 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview 2.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant alleges that the Respondent has no relationship or economic link with it nor has the Respondent received any licence to use the HUGO BOSS or BOSS trade mark in a domain name or in any other manner. The Respondent has never been known by the Domain Name. The Panel would have liked to have been addressed on the connection between the Respondent and the owners of the HOUSHI BOSS trade marks. However in the absence of a challenge from the Respondent, the Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has elected not to do so. In the circumstances, the Panel finds it difficult to conceive of any way in which the Respondent could reasonably be said to have rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true. Conclusory allegations without supporting evidence would usually not suffice.
The Complainant alleges that the Domain Name is connected to a website which is being used in bad faith. It has not however submitted a copy of the cached website. It is also not entirely clear which elements in the Respondent's website the Complainant considered that confusion was "obviously aimed". The Panel managed to track down on the Internet Archive a version of the website but it appeared incomplete. It is not for the Panel to have to do this.
The Complainant reproduced in the Complaint two photographs as evidence that the Respondent uses the sign HOUSHI BOSS in an identical font and also reproduces in a "nearly identical manner the Complainant's corporate identity". The two photographs appear to be a shop front of the Complainant's shop and a signboard above a shop which may be of whoever owns HOUSHI BOSS. There have been allegations made that the HOUSHI BOSS trade marks in which 17 sets of proceedings were filed belong to a third party. No explanation has been given as to how that third party is related to the Respondent. That being the case, it is not clear whether the shop in the photograph is the shop of the Respondent or an unrelated third party. It is also not clear whether the Respondent is using without authorisation the third party, "Shenxiang's" trade mark rather than the Complainant's trade mark. Notwithstanding the above, the Panel has in any event found that the Domain Name is confusingly similar to the Complainant's trade mark.
The Domain Name appears to have been first created and registered in 2003, more than a decade ago. It is not clear from the WhoIs record whether the current listed registrant, the Respondent, was the original registrant of the Domain Name. There has been no explanation as to why nothing has been done about the registration before. There is clearly a history associated with the HOUSHI BOSS trade mark as stated above but insufficient details have been provided.
Had there been a point of substance to make, presumably the Respondent would have filed a Response.
The Complainant's contentions as set out in A above amounts to an allegation that the Respondent registered the Domain Name with the Complainant in mind and with the object of diverting Internet users to the Respondent's site for commercial gain. The "diversion" stems from the fact that a substantial number of Internet users are likely to visit the Respondent's site, believing it to be a site of or associated with the Complainant.
In the circumstances, the Panel believes this to be the probable intention of the Respondent and in the absence of a challenge from the Respondent, finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name, <houshiboss.com>, be cancelled.
Date: January 4, 2016