WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG. v. Steve Straessle, Personal
Case No. D2016-2132
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 Steve Straessle, Personal of United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <hugobosssuitsus.com> (the “Domain Name”) is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2016. On October 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 27, 2016, 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 October 27, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. The Complainant requested for English to be the language of the proceeding in the Complaint. 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2016.
The Center appointed Linda Chang as the sole panelist in this matter on November 30, 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 Complainants are part of the Hugo Boss Group headquartered in Metzingen, Germany. The Hugo Boss Group, founded in 1924, develops and markets premium fashion and accessories for men and women, and generated net sales of EUR 2.8 billion in fiscal year 2015. The Complainant HUGO BOSS Trade Mark Management GmbH & Co. KG is the owner of numerous HUGO BOSS trademark registrations around the world, while the Complainant HUGO BOSS AG owns and operates websites at domain names incorporating the trademark HUGO BOSS such as <hugoboss.com>.
The Domain Name was registered on February 15, 2016. It used to resolve to a website displaying contents in English and offering for sale HUGO BOSS branded clothing, but is currently redirected to a website “www.sitopiumini.com”, which is offering for sale MONCLER branded clothing.
5. Parties’ Contentions
The Complainants contend that the Domain Name wholly incorporates the words “hugo boss” which is identical to the trademark HUGO BOSS. The descriptive or geographic indication terms “suits” and “us” (for United States) could be recognized as descriptive as altogether and interpreted as “hugoboss suits us”, and do not influence the comparison. The Domain Name and the Complainants’ trademarks are therefore identical or at least confusingly similar.
The Complainants further contend that the Respondent has not been licensed or authorized to use the trademark HUGO BOSS or to apply for any domain name incorporating the trademark. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name since the website the Domain Name resolved to showed selling activities. The Respondent thus does not hold any rights or legitimate interests in respect of the Domain Name.
The Complainants finally contend that the Respondent must have had knowledge of the Complainants’ rights when registering the Domain Name given the fame of the trademark HUGO BOSS. The associated website with the Domain Name sold clothing articles under the name “Hugo Boss” and therefore there is no bona fide offering of goods or services. The Domain Name was registered to create confusion and mislead Internet users into believing that the Complainants are affiliated with the Respondent or endorse the website the Domain Name resolved to. The Respondent thus registered and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Multiple Complainants
The Complaint was filed by two complainants HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG against a single respondent.
The Complainant HUGO BOSS Trade Mark Management GmbH & Co. KG owns the trademark HUGO BOSS, while the Complainant HUGO BOSS AG uses the trademark HUGO BOSS to register corresponding domain names and operates their associated websites. The Panel finds that both Complainants share common legal interests and have a common grievance against the Respondent. The Panel thus accepts the consolidation of the Complainants and the filing of this Complaint.
B. Language of the Proceeding
Under paragraph 11(a) of the Rules, the language of the proceeding shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise. The Registrar has confirmed that the Registration Agreement is in Chinese.
The Complainants requested for English to be the language of the proceeding and the arguments include that English is the main spoken language in the world and the main working language in the field of fashion and Internet; that the Respondent registered the Domain Name using the Complainants’ trademark in identical form and Latin characters; that the Complainants are based in Germany and Chinese is not a current language; and that high costs could be probably incurred if translation of the Complaint is requested.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into account all relevant circumstances. It is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceeding to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notices that the Respondent appears to be located in the United State, and the website associated with the Domain Name used to resolve to a website displaying contents in English. The Panel further notices that the Respondent has been notified of the proceeding in both Chinese and English.
The Panel also takes into consideration that the Complainants have submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint is requested to be translated into Chinese, and that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceeding but did not do so.
The Panel thus finds that using English as the language of the proceeding would not be prejudicial to the Respondent in its ability to articulate the arguments for the case, and determines the language of the proceeding shall be English and the decision will be rendered in English.
C. Identical or Confusingly Similar
The Complainants have presented sufficient evidence to prove that HUGO BOSS Trademark Management GmbH & Co. KG is the registered proprietor of the trademark HUGO BOSS around the world including in the United States and China.
The Panel finds that “.com” being the generic Top-Level Domain is not a distinguishing factor and the dominant part of the Domain Name is “hugobosssuitsus” consisting of “hugoboss”, “suits” and “us”. The Panel agrees that the addition of the generic word “suits” and geographical term “us” cannot avoid the finding of confusing similarity, but instead reinforces the risk of confusion since the generic word “suits” is descriptive of the Complainants’ business. See Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800.
Accordingly, the Panel holds the Domain Name is confusingly similar to the Complainants’ trademark HUGO BOSS, and the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
The Complainants contend that they have never licensed or authorized the Respondent to use the trademark HUGO BOSS or to apply for any domain name incorporating the trademark.
The Panel notices from the file that the Domain Name used to resolve to a website prominently displaying the trademark HUGO BOSS and offering for sale HUGO BOSS trademarked clothing without placing any disclaimer to correctly disclose its relationship with the Complainants. The Panel does not consider it bona fide legitimate noncommercial or fair use of the Domain Name under the Policy. Accordingly, the Panel determines that there is no indication that the Respondent may have rights or legitimate interests in respect of the Domain Name.
The Panel is satisfied that the Complainants have established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683. The Respondent however chose not to respond and prove its rights or legitimate interests in the Domain Name.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
The Complainants have trademark registrations of the mark HUGO BOSS worldwide including the United State where the Respondent appears to reside. The Complainants have developed tremendous goodwill in the trademark HUGO BOSS and the trademark is internationally well known.
Given the goodwill and fame the Complainants and the trademark HUGO BOSS have gained worldwide, the Panel agrees that the Respondent must have had knowledge of the trademark HUGO BOSS when registering the Domain Name, which is further evidenced by the Respondent’s offering for sale HUGO BOSS trademarked clothing on the website associated with the Domain Name. The Panel concludes that the Respondent’s obvious awareness of the trademark HUGO BOSS at the time of registering the Domain Name constituted opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277.
The Panel further agrees that the Respondent intentionally chose the trademark HUGO BOSS to register the Domain Name and later used the Domain Name to offer for sale HUGO BOSS trademarked products. By using the Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainants’ trademark HUGO BOSS as to the source, sponsorship, affiliation, or endorsement of its own website or of a product or service on the website.
The current use of the Domain Name is further evidence of bad faith.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to 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, <hugobosssuitsus.com>, be transferred to the Complainant Hugo Boss AG.
Date: December 14, 2016