Centro de Arbitraje y Mediación de la OMPI

ADMINISTRATIVE PANEL DECISION

HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Dinyi Chen

Case No. D2016-2149

1. The Parties

Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG of Metzingen, Germany (collectively “Complainant” or “Hugo Boss Group”), represented by Dennemeyer & Associates S.A., Germany.

Respondent is Dinyi Chen of Wuxian, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <hugobossoutletclearanceshop.com> (the “Disputed 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 October 24, 2016. On October 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 25, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 18, 2016.

The Center appointed Richard W. Page as the sole panelist in this matter on November 23, 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 Hugo Boss Group was founded in 1924 and is one of the market leaders in the premium and luxury segment of the global apparel industry. The Group focuses on the development and marketing of premium fashion and accessories for men and women. Headquartered in Metzingen, Germany, the Group has nearly 14,000 employees with net sales of EUR 2.8 billion in fiscal year 2015, making it one of the most profitable listed apparel manufacturers in the world.

The world-wide trademark of HUGO BOSS (the “HUGO BOSS Mark”) encompasses collections of BOSS, BOSS Orange, BOSS Green and HUGO. The HUGO BOSS Mark covers a comprehensive product range including classic to modern apparel, elegant eveningwear and sportswear, shoes, leather accessories as well as licensed fragrances, eyewear, watches, children’s fashion, home textiles and mobile accessories.

The Group leverages targeted marketing measures to raise the appeal of its brands. Apart from the above-the-line marketing instruments such as print and out-of-home media, the relevant target groups are increasingly reached using digital channels. In light of the expansion of the Group’s own retail business, the importance of point-of-sale marketing is also mounting.

The Group owns numerous trademark registrations for the HUGO BOSS Mark all over the world as shown in Annex 5 to the Complaint in several classes of the 10th International Nice Classification. Complaint HUGO BOSS Trade Mark Management GmbH & Co. KG has European Union registrations, International Trademark registrations, Chinese registrations and Hong Kong, China registrations, many of which are identified in Annex 6 to the Complaint.

Furthermore, the Group owns and operates websites and numerous domain names incorporating the HUGO BOSS Mark, for instance <hugo.com>, <hugoboss.com>, and <hugoboss.co.uk>.

The Disputed Domain Name was registered on November 10, 2015, and resovles to a website containing only online selling activities which infringe the HUGO BOSS Mark.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the HUGO BOSS Mark has been considered internationally well-known in prior UDRP cases such as Hugo Boss Trademark Management GmbH & Co. KG v. Domain Admin / Personal, Loung Dinh Dun, WIPO Case No. D2011-0564 regarding the domain name <highboss.com>.

Complainant further alleges that the Disputed Domain Name is identical to the HUGO BOSS Mark and that the Disputed Domain Name wholly incorporates the words “hugo boss”. The Disputed Domain Name is made up of the HUGO BOSS Mark as well as the descriptive terms “outlet”, “clearance” and “shop”, which are descriptive of retail merchandising and not distinctive. Complainant further alleges that the addition of the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing factor.

Complainant argues that Respondent has no legitimate rights to or interests in the name “Hugo Boss”. Respondent has no license to use the HUGO BOSS Mark, is not commonly known by the name “Hugo Boss,” and is not making a legitimate noncommercial or fair use of the Disputed Domain Name since the website first contained online selling activities.

Complainant contends that given the pervasive nature of the HUGO BOSS Mark in the fashion industry that there are no imaginable circumstances under which Respondent could legitimately use the Disputed Domain Name in good faith.

Complainant further contends that Respondent must have had knowledge of the HUGO BOSS Mark when the Disputed Domain Name was registered. As can be seen from a screen shot in the Complaint, there is no bona fide offering of good or services on the website to which the Disputed Domain Name resolves. As the selling of clothing articles under the HUGO BOSS Mark was not allowed.

Complainant further contends that the Disputed Domain Name has been registered to create confusion and to mislead Internet users into believing that Complainant and Respondent are affiliated or endorsed the website to which the Disputed Domain Name resolves. Complainant asserts that Respondent created or imitated the design of the original website of Complainant as to its look and feel. This activity was an attempt to wrongly lead the consumer and to attract for commercial gain Internet users who think it is a website managed by Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in this domain name dispute proceeding, but when Respondent fails to do so, asserted facts that are not unreasonable can be taken as true and Respondent is subject to the inferences that flow naturally from the information provided by Complainant. (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.)

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Disputed Domain Name of Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that the Disputed Domain Name is identical with and confusingly similar to the HUGO BOSS Mark pursuant to the Policy, paragraph 4(a)(i).

Complainant further contends that it has numerous registrations of the HUGO BOSS Mark, that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the HUGO BOSS Mark.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Complainant argues that the entirety of the HUGO BOSS Mark is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of common, non-distinctive words, it is still confusingly similar to the trademark as the additional terms do not eliminate the confusing similiarity. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel notes that the entirety of the HUGO BOSS Mark is in the Disputed Domain Name. The additional of terms “outlet”, “clearance” and “shop” in the Disputed Domain Name do not affect a finding that the Disputed Domain Name is identical or confusingly similar to the HUGO BOSS Mark.

Furthermore, the addition of the gTLD “.com” is not a distinguishing factor.

Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the HUGO BOSS Mark.

Therefore, the Panel finds that the Disputed Domain Name and the HUGO BOSS Mark are confusingly similar and the first requirement under paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights to or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, then respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the policy.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude whether Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant has alleged that Respondent has no rights to or legitimate interests in the name “Hugo Boss.” Respondent has no license to use the HUGO BOSS Mark, has offered no legitimate goods or services for sale, is not commonly known by the name “Hugo Boss”, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name since the website contains only online selling activities which infringe the HUGO BOSS Mark.

The Panel finds that Complainant has sustained its burden of coming forward with allegations that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has not contested this prima facie case.

Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the HUGO BOSS Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the HUGO BOSS Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant argues that given the pervasive nature of the HUGO BOSS Mark in the fashion industry that there are no imaginable circumstances under which Respondent could legitimately use the Disputed Domain Name in good faith.

The Panel agrees with Complainant’s contention that Respondent must have had knowledge of the HUGO BOSS Mark when the Disputed Domain Name was registered. The Disputed Domain Name has been registered to create confusion and to mislead Internet users into believing that Complainant and Respondent are affiliated or that Complainant has endorsed the website to which the Disputed Domain Name resolves.

Therefore, the Panel finds that Complainant has proven bad faith under paragraph 4(b)(iv) of the Policy and thus under paragraph 4(a)(iii) of the Policy.

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 Disputed Domain Name <hugobossoutletclearanceshop.com> be transferred to Complainant HUGO BOSS AG.

Richard W. Page
Sole Panelist
Date: December 6, 2016