WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Tiagra Investments, Christopher Murphy

Case No. D2014-2022

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 Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Tiagra Investments, Christopher Murphy of Banksia, Australia.

2. The Domain Name and Registrar

The disputed domain name <hugoboss.clothing> is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 17, 2014. On November 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 19, 2014 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 21, 2014.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2014.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 22, 2014. 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 in this proceeding are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG, of Metzingen, Germany, hereinafter referred to as the Hugo Boss Group or the Complainant. Created in 1924, the Hugo Boss Group is one of the market leaders in the premium and luxury segment of the global apparel market.

The Complainant has proven that the trademark HUGO BOSS enjoys thorough protection in many registrations worldwide.

The Complainant is inter alia the owner of:

Community Trademark Registration HUGO BOSS No. 000049254 registered on March 26, 2008 and covering goods and services falling in classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 34, 35 and 42.

Community Trademark Registration HUGO BOSS No. 006645204 registered on November 26, 2011 and covering goods falling in class 16.

International Trademark Registration HUGO BOSS No. 430400 designating more than 40 countries registered on June 3, 1977 and covering goods falling in classes 18, 24 and 25.

International Trademark Registration HUGO BOSS No. 513257 designating more than 35 countries registered on April 10, 1987 and covering goods and services falling in classes 9, 14, 16, 18, 25, 28 and 34.

Additionally, the Complainant owns and operates websites through numerous domain names incorporating the HUGO BOSS trademarks, such as "www.hugoboss.com" and "www.hugoboss.co.uk".

The Complainant's trademark registrations long predate the registration of the disputed domain name.

The disputed domain name <hugoboss.clothing> was registered on February 2, 2014. The disputed domain name at present is parked and displays several pay-per-click ads all related to fashion and perfumes.

5. Parties' Contentions

A. Complainant

The Complainant claims that the disputed domain name is identical to the Complainant's HUGO BOSS registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the HUGO BOSS trademark.

This Panel agrees with the Complainant's assertion that the addition of the new generic Top-Level Domain (gTLD) ".clothing" is irrelevant in the determination of the confusing similarity between the Complainant's trademark and the disputed domain name.

In fact, previous UDRP panels have found that gTLDs, including new gTLDs, should typically be disregarded for the purpose of establishing whether a disputed domain name is identical or confusingly similar to a trademark. Disregarding the gTLD, ".clothing", the disputed domain name is identical to the Complainant's trademark

Even if this Panel were to take the gTLD ".clothing" into account, it is of the opinion that it is more likely to increase the likelihood of confusion rather than diminish it, owing to the fact that it precisely refers to a field in which the Complainant's trademarks are well known.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark HUGO BOSS in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name "Hugo Boss" or by a similar name. Moreover, the Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain name.

Finally, this Panel agrees with the previous panel's finding in Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao WIPO Case No. D2014-1413, that "the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with men's and women's apparel, fragrances, accessories, and footwear products and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant".

The same concept applies to the present case: the HUGO BOSS mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

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

C. Registered and Used in Bad Faith

Considering that the Complainant's trademark is a renowned trademark that has been registered and used for many decades and thus long predates the disputed domain name's registration, and in the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant's services and trademarks and deliberately intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant's trademarks at the time of the registration of the disputed domain name; and that the above described use of the disputed domain name, i.e. to divert Internet traffic to the Respondent's website, falls within the example of bad faith set out in paragraph 4(b)(iv) of the Policy: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."

Moreover, this Panel finds appropriate and agrees with the Complainant's assertion that: "the choice of the new gTLD '.clothing' clearly emphasize[s] the will of the Respondent to relate the website to the Complainants who are…well-known in the world of fashion and to create confusion".

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied 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 <hugoboss.clothing> be transferred to the Complainant HUGO BOSS AG.

Fabrizio Bedarida
Sole Panelist
Date: December 30, 2014