WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hugo Boss Trade Mark Management GmbH & Co. KG, Hugo Boss AG v. freeoakley / WhoisGuard
Case No. D2013-0540
1. The Parties
The Complainants are Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG of Metzingen, Germany, represented by Baker & McKenzie, United States of America.
The Respondent is freeoakley / WhoisGuard of Angola, and Los Angeles, California, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <metzingenhugoboss.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2013. On March 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2013, 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 Complainants on March 22, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainant filed an amended Complaint March 25, 2013.
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 March 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2013.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on April 24, 2013. 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 are the holders of inter alia the following trademarks registered with the United States Patent and Trademark Office (USPTO):
- BOSS HUGO BOSS (figurative) Reg. No. 4,045,496, registered in international class 18 on October 25, 2011,
- BOSS HUGO BOSS (figurative) Reg. No. 3,127,031, registered in international classes 18, 25 and 28 on August 8, 2006,
- BOSS HUGO BOSS (figurative) Reg. No. 4,085,635, registered in international classes 14 and 28 on January 17, 2012,
- HUGO BOSS Reg. No. 2,242,539, registered in international class 25 on May 4, 1999,
- HUGO BOSS Reg. No. 1,624,938, registered in international class 25 on November 27, 1990, and
- HUGO BOSS Reg. No. 1,515,181, registered in international class 9 on December 6, 1988.
The disputed domain name was registered on September 11, 2012.
5. Parties’ Contentions
The Complainants are the owners of numerous United States trademark and service mark registrations for the marks HUGO BOSS, BOSS HUGO BOSS and HUGO HUGO BOSS and variations thereof (the “HUGO BOSS Marks”). Since 1970, the Complainants and their predecessors have designed, manufactured, sold, distributed and marketed high-end fashion wear, accessories and related products in the United States under the HUGO BOSS Marks. The Complainants own trademark registrations with respect to the United States, the European Union and many other countries worldwide covering various goods and services.
The Complainant Hugo Boss AG owns and operates websites at numerous domain names incorporating the HUGO BOSS Marks, for example <hugo.com>, <hugoboss.com> and <hugoboss.co.uk>.
The Complainants regularly advertise their products in prominent and widely distributed magazines and sponsors a number of sporting events and fund-raising campaigns. Due to the Complainants’ substantial advertising and promotion efforts and continuous use of the HUGO BOSS Marks, the Complainants have become widely recognized to the purchasing public as the source of products bearing and services offered under the HUGO BOSS Marks.
The disputed domain name is confusingly similar to the Complainants’ trademarks. The disputed domain name differs from the Complainants’ marks only by the inclusion of “metzingen”, which is the town in Germany where the Complainants’ headquarters is located. The addition of the term “metzingen” is calculated to further associate the disputed domain name with the Complainants.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered on September 11, 2012, which was decades after the Complainants’ and the Complainants’ predecessors began using and registered its HUGO BOSS Marks and well after the marks became well-known and famous. There is no relationship between the Respondent and the Complainants. The Respondent is not in any way authorized by the Complainants to use the HUGO BOSS Marks nor is the Respondent holding any registered trade or service mark rights relating to the disputed domain name. The Respondent is using the website linked to the disputed domain name to market and sell unauthorized and/or counterfeit goods under the HUGO BOSS Marks, misleading and diverting Internet users to the website for its commercial gain. Due to the fame and notoriety associated with the Complainants’ HUGO BOSS Marks, it’s impossible to conceive of a circumstance in which the Respondent could legitimately use the disputed domain name.
Given the world-wide fame of the Complainants’ HUGO BOSS Marks, its clear that the Respondent had knowledge of the Complainants’ rights when it registered the disputed domain name. The Respondent registered and is using the disputed domain name in bad faith, intentionally attempting to attract Internet users to its website for commercial gain through the misleading use of the HUGO BOSS Marks and images of Hugo Boss merchandise. In doing so, the Respondent purports to sell Hugo Boss merchandise at discounted prices and falsely creating the appearance of an association with the Complainants. No clarification as to the Respondent’s relationship to the Complainants is made on the website linked to the disputed domain name, leading potential partners and Internet users to believe that the website belongs to the Complainants or is authorized by them.
The Complainants sent a cease and desist letter to the Respondent, but received no response.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, each of the three following elements must be satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
Paragraph 4(a) of the Policy further states that the burden of proving that all three elements are present lies with the Complainants.
A. Identical or Confusingly Similar
The Panel finds that the Complainants have established rights to a large number of registered HUGO BOSS trademarks. Also, the Complainants’ trademark HUGO BOSS has been considered internationally well-known in prior UDRP cases. See for example Hugo Boss Trademark Management GmbH & Co. KG v. Domain Admin/Personal, Loung Dinh Dung, WIPO Case No. D2011-0564.
The disputed domain name was registered long after the first use and registrations of the HUGO BOSS trademark. The disputed domain name consists of the Complainant’s HUGO BOSS trademark with the addition of the term “mezingen” and the generic Top Level Domain (“gTLD”) “.com”. According to well-established consensus among UDRP panels, the gTLD is not distinguishing.
The Panel finds, in the light of the well-known character of the Complainant’s trademark, that HUGO BOSS is the distinctive part of the disputed domain name. The Panel finds that the addition of the term “metzingen” is not sufficient to avoid the risk for Internet user confusion in relation to the Complainants’ trademark, but rather strengthens it due to the fact that the Complainants reside in the city of Metzingen, Germany.
Consequently, the Panel finds the disputed domain name confusingly similar to the trademark in which the Complainants have established rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In all cases, including when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1, and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainants have asserted that no permission to use the HUGO BOSS trademark in the disputed domain name has been granted to the Respondent. Moreover, the Complainants have stated that the Respondent has no rights of its own or legitimate interests to the disputed domain name which incorporates the Complainants’ trademark. Also, the Complainants have asserted that the disputed domain name is used by the Respondent to link to a website which purports to sell HUGO BOSS goods at discounted prices using photos of Hugo Boss’ apparel and accessories.
Having considered the submissions of the Complainants, and the lack of response from the Respondent, the Panel finds that the Respondent is not connected with the Complainants or authorized by them to use the HUGO BOSS trademark in the disputed domain name. Further, the Panel finds that the Respondent is not commonly known by the disputed domain name.
The Panel finds that HUGO BOSS is used in the disputed domain name with an intention to derive commercial advantage thereof. Such use by the Respondent under the circumstances is not a legitimate noncommercial or fair use and does not confer any rights in favor of the Respondent.
In the light of what is stated above, the Panel finds that the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not provided evidence otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Having regarded the fact that the Complainants’ HUGO BOSS trademark was registered and used many years before the disputed domain name registration and the well-known nature of the trademark, it is in this Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainants’ trademark rights and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The addition of the term “metzingen”, a name closely related to the Complainants’ business, further increases the risk of confusion and further evidences bad faith registration by the Respondent.
The Complainants have alleged that the Respondent is using the disputed domain name to present a website where it purports to market and sell HUGO BOSS merchandise. By the printouts from the website linked to the disputed domain name submitted by the Complainants it is proven that the Respondent is using the disputed domain name to present what seems to be offers of the Complainants’ products. The fact that the Respondent is using the disputed domain name including the Complainants’ trademark with a term closely related to the Complainants’ business, together with the Respondent’s offerings of what is presented as the Complainants’ products, is sufficient to indicate use in bad faith.
Consequently, the Panel finds that the third element of the paragraph 4(a) of the Policy is fulfilled.
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 <metzingenhugoboss.com> be transferred to the Complainant Hugo Boss AG.
Date: May 8, 2013