WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Dinyi Chen

Case No. D2016-0791

1. The Parties

The Complainants are 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 Dinyi Chen of Wuxian, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <hugobossclearanceoutlet.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2016. On April 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2016.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on May 25, 2016. 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 following facts are undisputed. For the sake of simplicity, this decision will refer to the Complainant if there is no particular purpose to distinguish between the Complainants.

The Complainant is part of the Hugo Boss Group. The Hugo Boss Group is organized and existing under the laws of Germany. The Hugo Boss Group was founded in 1924 and has its corporate headquarters in Metzingen, Germany. The Hugo Boss Group is one of the market leaders in the premium and luxury segment of the global apparel market. The Group employs almost 14,000 employees and a listed apparel manufacturer with a net sales of EUR 2.8 billion (2015).

The Complainant Hugo Boss Trade Mark Management GmbH & Co. KG is the owner of a various number of trademark registrations for HUGO BOSS with validity in several countries and territories worldwide, registered for various goods and services, including perfumery products, soaps, watches, jewelry, clothing for men, women and children, underwear, leather goods, suitcases and bags and belts made of leather and/or textile and/or plastic. The trademark registrations include national trademark registrations as well as European Union Trademark registrations and International Trademark registrations. Furthermore, the brand portfolio of the Complainant Hugo Boss Trade Mark Management GmbH & Co. KG includes also trademark registrations for the signs BOSS, BOSS Orange, BOSS Green and HUGO. The trademark registrations will hereinafter in singular be referred to as the “HUGO BOSS Trademark”.

As a result of, amongst others, the marketing of the Hugo Boss Group, the HUGO BOSS Trademark is, as well as the other brands of the Complainant Hugo Boss Trade Mark Management GmbH & Co. KG, worldwide well known.

Furthermore, the Complainant Hugo Boss AG also owns and operates websites at several domain names incorporating the HUGO BOSS Trademark, for instance <boss.com>, <boss.co.uk>, <hugobos.com> and <hugoboss.co.uk>.

The Domain Name was registered on December 29, 2015.

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following:

The Complainant brought forward the prior UDRP case Hugo Boss Trademark Management GmbH & Co. KG v. Domain Admin / Personal, Loung Dinh Dung, WIPO Case No. D2011-0564 and have stated that the HUGO BOSS Trademark is considered internationally well known in the aforementioned and other prior UDRP cases.

After comparison of the Domain Name and the HUGO BOSS Trademark, it can be concluded that the Domain Name is identical to the HUGO BOSS Trademark and the Complainant’s domain names, as it wholly incorporates the words “hugo boss”. The addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in the determination of the confusing similarity between the signs, since it does not impact the overall impression of the dominant portion of the Domain Name “hugo boss”. The Domain Name contains, along with the HUGO BOSS Trademark, the terms “clearance” and “outlet”. These two terms are descriptive and shall therefore not influence the comparison of the conflicting signs.

Therefore, the Domain Name and the HUGO BOSS Trademark and domain names of the Complainant are clearly identical or at least, the Domain Name is clearly confusingly similar to the HUGO BOSS Trademark.

The Complainant stated that the Respondent has no legitimate right to the name “Hugo Boss”, which is the name of the company of the Complainant and the Respondent has no legitimate rights or interests in respect of the Domain Name.

The Complainant has not licensed or authorized the Respondent to use the HUGO BOSS Trademark or to apply for any domain name incorporating the HUGO BOSS Trademark. The Respondent is also not making a legitimate noncommercial or fair use of the Domain Name, because the website of the Domain Name clearly shows selling activities that are not agreed by the Complainant. Moreover, the Complainant is the sole owner of rights to the name HUGO BOSS, as registered in the trademark offices as well as the Registry of Companies. The Complainant has never consented nor authorized the registration of the domain names which coincides with its company name.

In addition, the Respondent’s name does not coincide with the Domain Name. Furthermore, the Complainant stresses that, knowing the impressive number of trademarks and domain names registered by the Complainant and its fame, goodwill and notoriety, there are no imaginable circumstances under which the Respondent could legitimately use the Domain Name.

Subsequently, the Complainant argues that the Domain Name is registered and being used in bad faith. According to the Complainant, it is clear that the trademark HUGO BOSS is well known and that the Respondent must have had knowledge of the Complainant’s rights at the time of registration of the Domain Name.

In addition, the Complainant has presented extracts from the website of the Domain Name of the Respondent and the original website of the Complainant. With these, the Complainant has argued that there is no bona fide offering of goods or services on the website of the Domain Name, since it leads to the selling of clothing articles under the mark HUGO BOSS, which was not allowed by the Complainant. After all, the Complainant has never authorized the sale of its products by the Respondent.

Furthermore, the extracts demonstrate that is obvious that the Domain Name has been registered to create confusion and mislead Internet users into believing that the Complainant and the Respondent are affiliated or endorse the website which the Domain Name resolves to. The website under the Domain Name lacks the presence of terms of use for the website and security and privacy rules and has really re-created or imitated the design of the original website of the Complainant. This demonstrates that there was an attempt to wrongly lead the consumer and attract, for commercial gain, Internet users who could think that the website under the Domain Name is a website managed by the Complainant. These circumstances, amongst with the unauthorized sale of products on the website of the Domain Name that gives the wrong impression of a genuine used website, is clearly use in bad faith.

Last of all, the Complainant has presented a list of decisions in which it has objected against the use of domain name registrations containing the HUGO BOSS Trademark. According to the Complainant, the case HUGO BOSS Trade Mark Management GmbH & Co. KG v. Guanjing / Daziran, WIPO Case No. D2014-0801, regarding the domain name <hugobossoutletsale.com> is highly similar to this case.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Name 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

The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the aforementioned trademark.

The Complainant has shown that it has rights in the HUGO BOSS Trademark.

The Domain Name incorporates the HUGO BOSS Trademark in its entirety and adds the words “clearance” and “outlet”. The Panel finds that the dominant part of the Domain Name is “hugo boss” and that the elements “clearance” and “outlet” are descriptive. After all, “clearance” associates to a sale to dispose old merchandise and “outlet” associates to a factory or online store in which stock is directly sold to the public.

The addition of “.com” is irrelevant in the determination of the confusing similarity between the signs, see cases Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Also see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: “[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”

Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The question whether the Respondent is using the Domain Name in connection with a bona fide offering of goods, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., supra (regarding the domain name <okidataparts.com>).

In order for the use to be qualified as a “bona fide offering of goods”, the offering of the goods must meet several requirements, referred to as the “Oki Data criteria”.

Those include, at minimum, the following:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the website of the domain name to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the respondent must not try to corner the market in all domain names, thus it must not deprive the trademark owner of reflecting its own mark in a domain name;

- the website of the domain name must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that the respondent is the trademark owner, or that its website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website).

The Panel notes that the website under the Domain Name prima facie meets the first three of the above requirements. However, the Domain Name does not meet the last mentioned jurisprudential requirements that it has to accurately and prominently disclose the Respondent’s relationship with the Complainant. The website under the Domain Name creates, jointly with the use of the website for the unauthorized sale of goods, the danger that the public will think that the Respondent and the Complainant are somehow commercially related. First of all, the Respondent does not exactly reveal the commercial background of its business undertaking: the front page mentions in the left corner that the website is “powered by Hugo Boss Outlet” (which could create the false impression that the website is powered by the Complainant), the “About Us”-page does not contain any text and the Respondent does not reveal at any other place on its website that its undertaking and website is in no way related to the Complainant. Therefore, the public could easily think that the website under the Domain Name is one of the official websites of the Complainant and the Respondent is somehow affiliated to the Complainant.

This is emphasized by the circumstance that the design of the website under the Domain Name is highly similar to and in the style of the design of the Complaint’s official website. Both websites are filled with a lot of pictures and less text, have bright colours, contain the logo “BOSS, HUGO BOSS” in the corner and have a substantial banner on the front page that contains of changing pictures.

Therefore, the Respondent, for purposes of the Policy, has not been using the Domain Name for a bona fide offering of goods or services.

Accordingly, the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name. The Respondent does not hold any trademark rights relating to HUGO BOSS, owns no licensed rights and is not authorized in any other way to use the HUGO BOSS Trademark.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith.

In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the HUGO BOSS Trademark is, as well as the activities of the Complainant, internationally well known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Name.

This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e. that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. In addition, the high similarity between the websites of Respondent and Complainant strongly indicate that the design of the website under the Domain Name imitates the original website of the Complainant. Furthermore, the sale of unauthorized products with this imitated website under the Domain Name creates the confusion that the Domain Name holds in fact a website for an official outlet of Hugo Boss products.

Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.

7. Decision

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 <hugobossclearanceoutlet.com> be transferred to the Complainant Hugo Boss AG.

Willem J. H. Leppink
Sole Panelist
Date: June 8, 2016