WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS AG, HUGO BOSS Trade Mark Management GmbH & Co. KG v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise Ltd
Case No. D2012-0273
1. The Parties
The Complainants are HUGO BOSS AG., HUGO BOSS Trade Mark Management GmbH & Co. KG of Metzingen, Germany, represented by Baker & McKenzie, United States of America.
The Respondents are Above.com Domain Privacy / Above.com Legal of Beaumaris Victoria, Australia and Host Master / Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <portalhugoboss.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2012. On February 13, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 15, 2012, Above.com, Inc. 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 Complainants on February 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 17, 2012.
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 Respondents of the Complaint, and the proceedings commenced on February 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 21, 2012.
The Center appointed Daniel Kraus as the sole panelist in this matter on April 11, 2012. 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
With respect to the United States, the European Union and many countries worldwide, Hugo Boss Trade Mark Management GmbH & Co. KG owns trademark registrations for HUGO BOSS covering goods and services including but not limited to clothing, headwear, footwear and related accessories for men, women and children, bags, wallets, purses and tote bags and retail store services for these goods. Moreover, the HUGO BOSS trademarks cover an array of other products and services including jewelry, watches, sunglasses, eyeglasses, fragrances, personal care and skin care products, model vehicles, video games, CDs, hair care products, lotions, creams and foams, leather goods, clocks, towels and linens, mugs, luggage, sports equipment, golf clubs, and other products and retail services associated with these goods.
Hugo Boss AG currently owns and operates web sites from the domains: <store-us.hugoboss.com>, <hugo.com>, <hugoboss.com>, <hugoboss.de>, <hugoboss.co.uk>, <hugohugoboss.com> and <bosshugoboss.com> and third level domain <portal.hugoboss.com> which contain, inter alia, information concerning the various collections of apparel and accessories currently presented by the Complainants, as well as information regarding the various types of corporate sponsorship and product placement in which the Complainants engage.
The disputed domain name resolves to the website “www.portalhugoboss.com”, and appears to be used as a "link farm" or "parking site" that misleadingly diverts traffic to the Respondents for financial gain from click though and/or advertising revenue.
5. Parties’ Contentions
The Complainants contend that the disputed domain name <portalhugoboss.com> is identical or confusingly similar to its HUGO BOSS trademarks and domain names in which it owns exclusive rights. The mere addition of the term “portal” is also identical to one of the Complainants’ own domain names, <portal.hugoboss.com>. Thus, the Respondents’ domain name is confusingly similar in sound, appearance and commercial impression to the Complainants’ HUGO BOSS marks.
The Complainants further argue that the Respondents have no rights or legitimate interests in respect of the disputed domain name, as there is no relationship between the Respondents and the Complainants. The Respondents registered the disputed domain name <portalhugoboss.com> on August 26, 2011, decades after the Complainants’ HUGO BOSS marks achieved worldwide consumer recognition and after the Complainants had registered its domain names <hugo.com>, <hugoboss.com>, <hugoboss.de>, <hugoboss.uk>, <hugohugoboss.com>, <bosshugoboss.com> and <portalhugoboss.com>. Further, there is no relationship between the Respondents and the Complainants, the Respondents being neither licensed by the Complainants nor otherwise authorized to use the Complainants’ HUGO BOSS marks. The Complainants further argue that the disputed domain name <portalhugoboss.com> contains click through advertisements for various Hugo Boss websites and for stores that carry merchandise. There is no bona fide offering of goods or services at the Respondents’ <portalhugoboss.com> website and the Respondents are not operating a legitimate business which is commonly known by the disputed domain name <portalhugoboss.com>. Due to the numerous trademarks owned by the Complainants and their fame, goodwill and notoriety, it is impossible to conceive any circumstance in which the Respondents could legitimately use the disputed domain name. Besides, there is no evidence that the Respondents are making a legitimate non-commercial or fair use of the disputed domain name.
Finally, the Complainants argue that the disputed domain name was registered and is being used in bad faith, as the Respondents must have had knowledge of the Complainants' rights when it registered the disputed domain name. There is no bona fide offering of goods or services on the website which <portalhugoboss.com> leads to. On the contrary, the disputed domain name is parked and populated with a substantial number of pay-per-click ads. Having been registered to create confusion and mislead the internet user into believing that the Complainants are affiliated or endorse the website which the Respondents’ domain name <portalhugoboss.com> resolves to may only lead to the conclusion that the disputed domain name was registered and is being used in that faith.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants have established registered trademark rights in HUGO BOSS.
The disputed domain name includes the Complainants’ trademark in its entirety together with the generic word “portal”. This additional generic term however fails to dispel the connection between the domain name and the trademark (see e.g. AutoScout24 Deutschland GmbH. v. Mark Marchese, WIPO Case No. D2005-0777; Lily ICOS LLC v. Tommy Hilinger, WIPO Case No. D2005-0475; ISL Marketing AG et al. v. J Y Chung et aI., WIPO Case No. D2000-0034; The Price Company v. Price Club, WIPO Case No. D2000-0664).
The disputed domain name is dominated solely by the element “hugoboss”, since “portal” is a pure descriptive term, in particular in the field of the Internet, where it commonly identifies a website that that brings together information from diverse sources in a unified way (see e.g. definition on Wikipedia). Thus, the disputed domain name <portalhugoboss.com> is solely dominated by the element “hugoboss” which is identical or at least confusingly similar to the Complainants’ HUGO BOSS trademarks.
The Panel finds that the disputed domain name is therefore confusingly similar to the Complainants’ HUGO BOSS trademarks. The Panel hence concludes that the disputed domain name is confusingly similar to trademarks in which the Complainants have rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non commercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondents to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainants have not licensed or otherwise authorized the Respondents to use its trademark.
As to paragraphs 4(c)(i) and (iii) of the Policy, the Panel concludes that the Respondents used the disputed domain name to profit by creating a likelihood of confusion with the Complainant’s trademark. In these circumstances, the Respondents’ offering cannot be considered to be bona fide nor does it constitute legitimate noncommercial or fair use (see MasterCard International Incorporated v. Acme Mail, WIPO Case No. D2008-0701; MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050).
As to paragraph 4(c)(ii), there is no evidence that the Respondent has ever been commonly known by the disputed domain name.
The Complainants have established a prima facie case that the Respondents lack rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel hence concludes that the Respondents have no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Based on the case record, and as discussed above, the Panel is satisfied that the disputed domain name was registered and used exclusively for the purpose of exploiting the reputation of the Complainants and its trademarks, trademark series and trade name with the element HUGO BOSS. Therefore, in accordance with paragraph 4(b)(iv) of the Policy, the Panel finds that the disputed domain name was registered and used in bad faith.
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 <portalhugoboss.com> be transferred to the Complainants.
Dated: April 25, 2012