WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hugo Boss Trade Mark Management GmbH & Co. KG v. James Perini
Case No. D2012-0321
1. The Parties
The Complainant is Hugo Boss Trade Mark Management GmbH & Co. KG of Metzingen, Germany, represented by Taylor Wessing, Germany.
The Respondent is James Perini of New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hugobossshoesshop.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2012. On February 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On February 17, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
Upon receipt of a suspension request from the Complainant, the proceeding was suspended from February 27, 2012 to March 28, 2012. Upon further request from the Complainant, the proceeding was re-instituted on March 29, 2012.
The Center has verified that the Complaint satisfies 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 proceeding commenced on March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on April 19, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 27, 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
The Complainant is a company incorporated in Germany and the owner of numerous registrations worldwide for the trade mark HUGO BOSS (the “Trade Mark”), the earliest dating from at least 1985. The Trade Mark is a well-known trade mark.
The Respondent appears to be an individual or entity with an address in the United States and telephone numbers in China, although the true identity of the Respondent is unclear.
C. The Disputed Domain Name
The disputed domain name was registered on June 10, 2011.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Trade Mark is one of Germany’s most famous fashion labels. It has been used by the Complainant for almost 90 years worldwide. The Trade Mark has been recognised as a well-known mark in several market surveys and in a previous UDRP decision made in favour of the Complainant.
The disputed domain name is confusingly similar to the Trade Mark. It contains the Trade Mark in its entirety together with the non-distinctive words “shoes” and “shop”.
The disputed domain name is resolved to a website (the “Website”) which:
1. offers for sale shoes which appear to be original shoes of the Complainant;
2. uses several of the word and logo trade marks of the Complainant, including the Trade Mark and the Complainant’s BOSS trade mark;
3. uses the wording “powered by Hugo Boss” in the website footer;
4. features photographs of the Complainant’s shoes; and
5. offers for sale shoes of a direct competitor of the Complainant, Hogan.
The Complainant believes the shoes sold on the Website under the Trade Mark are not original as:
1. the Website contains the wording “our products are AAA quality mirror images to authentic products”; and
2. the shoes are particularly low priced.
The Respondent is not commonly known under the disputed domain name and does not have any legitimate trade mark rights in respect of the disputed domain name.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain name. The Respondent is not making a bona fide offering of goods or services under the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is using the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website.
The Respondent’s bad faith is further evidenced by its failure to respond to the letter of demand sent by the Complainant’s representative, and by its apparent use of incorrect data in registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the Website is entirely in English;
(2) the server and IP address for the disputed domain name is matched to a company named BlueHost Inc. which is based in New York, USA;
(3) the disputed domain name is an English language domain name and includes the words “shoes” and “shop”;
(4) this indicates that the Respondent has sufficient ability to communicate in English;
(5) requiring the Complainant to submit documents in Chinese would cause undue delay and substantial further expense.
The Respondent did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel notes, for the reasons specified by the Complainant in the Complaint, it appears the Respondent is familiar with the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). The Respondent has not filed any objections in response to the Complainant’s language request.
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is familiar with the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by many years.
UDRP panels have consistently held that a domain name is generally identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The disputed domain name contains the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive words “shoes” and “shop” does not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark, or to offer for sale and sell shoes under the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by many years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends the Website is used by the Respondent to market imitation shoes under the Trade Mark and also under the trade mark of a direct competitor of the Complainant. There can be no legitimate interest in the sale of such products (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750). The Panel further notes the Website features several of the Complainant’s trade marks, including the Trade Mark, as well as images of the Complainant’s products, all without the authorisation or approval of the Complainant.
The Panel finds the wording “our products are AAA quality mirror images to authentic products” used on the Website is nothing more than a thinly veiled euphemism suggesting the Website is offering for sale copies of the Complainant’s (and Hogan’s) products. The Panel also notes the footwear on the Website is offered for sale at very low prices.
In all the circumstances, the Panel finds sufficient evidence has been adduced to enable the Panel to draw the inference that the Website has been used to offer for sale what appears to be counterfeit footwear.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel has concluded that the disputed domain name has been used to offer for sale what appear to be counterfeit products via the Website. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
Even if the goods on the Website are not counterfeit, the Panel finds the Respondent’s conduct in registering the disputed domain name and setting up the Website using the trade marks and images of the Complainant’s goods, and offering for sale footwear under the Trade Mark, and also under the trade mark of Hogan, a competitor of the Complainant, all without the authorisation, approval or licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the Website are counterfeit.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Respondent has provided what appears to be false information in registering the disputed domain name, namely, the use of the address and email of a “James Perini” based in New Jersey, United States, and the use of telephone and facsimile numbers beginning with the “+86” prefix for telephone and facsimile numbers in China. Following filing of the Complaint, a Mr […] Perini contacted the Complainant and the Center by email and, in ensuing correspondence, stated that he knew nothing about the registration and use of the disputed domain name, that his contact details had been used without authorisation, and that he agreed to the transfer of the registration for the disputed domain name to the Complainant. It is for this reason that the proceeding was suspended for a period of time1. The Panel finds these amounts to further evidence of bad faith on the part of the Respondent.
At some stage following receipt of the Complaint, the Respondent has taken down the Website and has ceased using the disputed domain name. It is well-established under UDRP jurisprudence that passive use of a disputed domain name can, in certain circumstances, amount to evidence of bad faith. In all the circumstances of this case, the Panel finds these amounts to a further indication of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <hugobossshoesshop.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: May 2, 2012
1 The proceeding was reinstated following the Registrar’s refusal to process the Complainant’s and Mr […] Perini’s transfer request.