WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Ludwig Rhys
Case No. D2016-2448
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 Ludwig Rhys of China.
2. The Domain Names and Registrar
The disputed domain names <cheaphugobossonline.com> and <hugobosssalecheaponline.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <hugobosssalecheaponline.com>. On December 5, 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 December 5, 2016, the Complainants filed an amended Complaint to add an additional domain name into the proceeding (<cheaphugobossonline.com>). Upon further request by the Center, the Registrar confirmed that the Respondent is listed as the registrant for the additional disputed domain name on December 6, 2016.
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 December 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2017.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 13, 2017. 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 own between them a number of trade mark registrations for HUGO BOSS around the world, including in China and Hong Kong, China registered in 1986 and 1985 respectively.
The Domain Names were registered in 2016 and are not currently being used.
5. Parties’ Contentions
The Complainants’ contentions can be summarised as follows:
There are multiple complainants as there is a common grievance against the Respondent as the Complainants have a common legal interest in rights affected by the Respondent’s conduct.
The Hugo Boss Group was founded in 1924 and is one of the market leaders in luxury apparel. It owns a number of trade mark registrations for HUGO BOSS around the world for, inter alia, clothing. It owns and operates websites at, inter alia, “www.hugoboss.com” and “www.hugoboss.co.uk”.
The Domain Names wholly incorporate the HUGO BOSS mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the names “hugo boss”. Addition of generic terms such as “cheap”, “sale” and “online” are descriptive and so do not impact the comparison of the conflicting signs. The Domain Names are clearly confusingly similar to the Complainant’s trade mark HUGO BOSS.
The Respondent has no rights or legitimate interests to the name HUGO BOSS which is the name of the Complainant’s company. The Complainants have not authorised the Respondent to use their trade marks. The Respondent is not making a legitimate noncommercial or fair use of the Domain Names since both lead to an error web page. The Respondent’s name is not the same as the Domain Names.
The Domain Names were registered in 2016. There is no bona fide offering of goods and services since the Domain Names do not lead to active web pages. In former times <hugobosssalecheaponline.com> led to the selling of clothing articles under the name “Hugo Boss”. The Domain Names have been registered to create confusion and mislead the Internet user into believing that the Complainants and the Respondent are affiliated or the Respondent’s web site is endorsed by the Complainants. There is an attempt to wrongly lead the consumer and attract for commercial gain Internet users who could think the web sites connected to the Domain Names are connected to the Complainants. The past use to give the wrong impression of a genuine site is clearly use in bad faith. The Domain Names should be transferred to Hugo Boss AG.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Preliminary Procedural Issues:
A. Addition of Domain Name
The Complaint was originally submitted regarding the disputed domain name <hugobosssalecheaponline.com>. Complainants requested the addition of the disputed domain name <cheaphugobossonline.com>. The Panel considers that it is reasonable to accept the addition of the additional disputed domain name to the Complaint as all Domain Names involve the Complainants’ trademarks and have been registered by the same domain name holder, the Respondent, within a short period. While the Complainant has submitted an amended complaint referring to all the Domain Names the Respondent has not submitted any communications. The Panel finds that the addition of the second disputed domain name to the present proceeding is fair and equitable to all the parties. Procedural efficiency would normally, and does in this case, favour such addition.
B. Multiple Complainants
The Panel agrees with the Complainants that between the Complainants there is a common legal interest in rights that are affected by the Respondent’s conduct. As such this is a case appropriate for multiple complainants and it would be procedurally efficient and fair and equitable to allow these proceedings to go forward with both Complainants.
C. Identical or Confusingly Similar
The Domain Names consist of the Complainants’ HUGO BOSS mark (which was registered, inter alia, in China and Hong Kong, China for clothing in 1986 and 1985 respectively), the generic words “sale”, “cheap” and/or “online” and the gTLD “.com”. The Panel agrees that the addition of generic terms and/or the gTLD to the Complainants’ mark does not distinguish the Domain Names from the Complainants’ trade mark pursuant to the Policy as the Complainants’ mark is identifiable and the distinctive part of both Domain Names.
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose to a mark in which the Complainants have rights.
D. Rights or Legitimate Interests
The Respondent has not answered this Complaint and has not provided any legitimate reason why he should be able to use the Complainants’ mark in the Domain Names. He does not appear to be commonly known by the Domain Names or authorised by the Complainants. There is no proof of any use by the Respondent of the Domain Names in these proceedings. Although the Complainants allege that <hugobosssalecheaponline.com> has previously been connected to a web site offering clothing there is no evidence in these proceedings of the same other than bare assertion by the Complainants and no evidence as to the nature of any such clothing, if any. The Respondent has made no comment. As such the Panel finds that there is no evidence in these proceedings of any use by the Respondent or any intellectual property or other rights which would give the Respondent rights or a legitimate interest in the Domain Names.
E. Registration and Use in Bad Faith
The Complainants assert that the Respondent must have known of its name due to the fame of its mark at the time of registration of the Domain Names. The Respondent has not responded and, therefore, has not denied that this is the case.
The Panel is of the opinion that, since the combination of the words “Hugo” and “Boss” is unlikely to be accidental, given the arbitrary non descriptive and distinctive nature of this mark, on the balance of probabilities it is likely that the Respondent had knowledge of the Complainants and their business at the time of registration of the Domain Names. The Respondent is not currently making any active use of the Domain Names. Previous UDRP panels have found evidence of bad faith registration and use where a respondent fails to make any active use of a domain name. In this case, the Panel finds that the Respondent is passively holding the Domain Names with the knowledge that they contain famous trade marks of a third party and has engaged in bad faith registration and use under 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 Names, <cheaphugobossonline.com> and <hugobosssalecheaponline.com>, be transferred to Hugo Boss AG.
Date: January 25, 2017