The Claimants are Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG both of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Brown Harry of Stadtbergen, Germany.
The dispute concerns the following domain name <hugobossoutlet.ch>.
The Request was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2016. On July 21, 2016, the Center transmitted by email to SWITCH, the ".ch" and ".li" registry, a request for verification in connection with the disputed domain name. On July 22, 2016, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. The Claimants filed an amendment to the Request on August 19, 2016. The Center verified that the Request together with the amendment to the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for ".ch" and ".li" domain names (the "Rules of Procedure"), adopted by SWITCH, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the dispute resolution proceedings commenced on August 22, 2016. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was September 11, 2016.
The Respondent has neither filed a Response nor expressed his readiness to participate in a conciliation in accordance with paragraph 15(d) of the Rules of Procedure.
On September 12, 2016 the Center notified the Claimants accordingly, who on September 18, 2016 made an application for the continuation of the dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.
On September 26, 2016 the Center appointed Nicolas Ulmer as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence from the Parties.
The Claimants are part of a large and well-known group selling apparel, fashion accessories and other products. According to the Request this group has some 14,000 employees and EUR 2.8 billion in 2015 net sales. Sales are made under the brand name "HUGO BOSS", which is also the company name.
The Claimants own numerous trademarks for HUGO BOSS in a variety of classes and, in particular, the first Claimant, Hugo Boss Trade Mark Management GmbH & Co. KG, owns international registrations which include and designate Switzerland, as follows:
International Trademark Registration HUGO BOSS No. 430400, registered on June 3, 1977, in classes 18, 24 and 25; and
International Trademark Registration HUGO BOSS No. 513257, registered on April 10, 1987, in classes 9, 14, 16, 18 25, 28 and 34.
The Respondent appears to be a person or entity domiciled in Germany.
The disputed domain name <hugobossoutlet.ch> was registered by the Respondent on November 3, 2014. The disputed domain name resolves or resolved to a website in German purporting to sell articles of the Claimants' clothing and accessories.
The Claimants allege extensive rights in the words "HUGO BOSS" as the name is registered as a trademark, is a distinctive sign and a company name, is extensively advertised and is used at websites owned by the Claimants.
The disputed domain name incorporates the entirety of the Claimants' trademarked name; the Top-Level Domain suffix and the addition of "outlet" to the disputed domain name do not diminish the identity and confusing similarity with the Claimants' trademarked name.
The Claimants add that they have never licensed or otherwise authorized the Respondent to make use of their trademarks in the disputed domain name or otherwise, and that the Respondent is not known by the disputed domain name.
The Claimants submit a screen shot of the site to which the disputed domain name leads or led and that sells clothing articles; the Claimants also points out that this site appears to be modeled to imitate the Claimants' legitimate website, and that it contained no disclaimer indicating that it was not affiliated with the Claimants. This, the Claimants allege, "clearly represents as attempt to wrongly lead the consumer and attract for commercial gain Internet users who think it is a website managed by the Claimants."
The Claimants request that the disputed domain name be transferred to the second Claimant, Hugo Boss AG.
The Respondent did not reply to the Claimants' contentions.
Paragraph 24(c) of the Rules of Procedure, states that "the Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the laws of Switzerland." These points are taken up consecutively.
The Claimants have submitted pleadings and evidence of being the owner and right holder of at least two trademarks protected in Switzerland for HUGO BOSS since at least 1977. These registered trademarks also coincide with the Claimants' name.
The first condition of paragraph 24(c) of the Rules of Procedure is accordingly fulfilled.
It should first be noted that the disputed domain name was registered containing the entirety of the Claimants' trademark with the addition of the addition of the term "outlet" thus clearly suggesting to consumers or Internet users that it ties to a sales outlet for the Claimants' products.
This is also evidence that the Respondent envisioned the unauthorized use of the Claimants' trademarks for commercial gain; the Claimants have submitted further such evidence in the form of a screen shot of a website that purports to sell the Claimant's products at discounted prices, which indicates a deliberate attempt to use the disputed domain name in a way that infringes on the Claimants' trademark and reputation, namely by misleading Internet users, for commercial gain, by creating a likelihood of confusion as to the source of the Respondent's website and the trademarks of the Claimants.
There is thus evidence that both the registration and use of the disputed domain name is an infringement on the Claimants' rights.
Under Article 13(1) of the Swiss Trade Mark Protection Act (Loi sur la protection des marques du 28 Août 1992) as amended, the right to a trademark confers an exclusive right of use on the trademark holder to make use of the trademark in connection with the goods and services for which it is registered. The Respondent has clearly infringed on this exclusive right.
It should also be noted that there is in this case substantial evidence of the fame and high level of recognition of the Claimants' trademark, including in Switzerland, such that even a passive use of the trademark by means of the registered disputed domain name would here be an infringement on the Claimants' rights.
The Expert thus concludes that the second condition of paragraph 24(c) of the Rules of Procedure is fulfilled.
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the disputed domain name <hugobossoutlet.ch> be transferred to the Claimant Hugo Boss AG.
Dated: October 5, 2016