WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG v. Guanjing / Daziran
Case No. D2014-0801
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 Guanjing / Daziran of Tianjin, China.
2. The Domain Name and Registrar
The disputed domain name <hugobossoutletsale.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2014. On May 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 19, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On May 20, 2014, 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.
The Center verified that the 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 in both Chinese and English, and the proceedings commenced on May 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on June 27, 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 Complainant is the registered proprietor of the trademark HUGO BOSS registered and used for different kinds of goods and services including in Europe, United States of America and China.
The disputed domain name <hugobossoutletsale.com> was registered on February 26, 2014. The website to which the disputed domain name resolves is written entirely in English and features prominently the trademark HUGO BOSS. The “About Us” section of the website provides the contact details of the Complainant.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <hugobossoutletsale.com> is made up of the registered trademark HUGO BOSS to which the generic or descriptive terms “outlet” and “sale” have been added. They are therefore are confusingly similar to the Complainant’s registered trademark HUGO BOSS.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for HUGO BOSS.
Further, the Complainant submits that the website to which the dispute domain name resolves sells products that are most likely counterfeit while also displays the Complainant’s HUGO BOSS trademark.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the HUGO BOSS trademark. The unauthorized sale of products by the Respondent on the website at the disputed domain name <hugobossoutletsale.com> that gives the impression of being a genuine website is clearly use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of Proceedings
The language of the registration agreement for the disputed domain name is Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested that English be the language of the proceedings but that the Respondent be allowed to respond in Chinese on the principal ground that the website at the disputed domain name is written entirely in English.
The Panel determines that English shall be the language of the proceedings but, as requested by the Complainant, the Respondent, if they had responded, would have been allowed to do so in Chinese. The website at the disputed domain name was written entirely in English and designed to do business worldwide in English. There can be no doubt that the Respondent is able to handle these proceedings in English.
6.2 Substantive Elements of the Policy
This is a very simple case of clear domain name hijacking for the purposes of commercial gain which the UDRP was designed to stop.
A. Identical or Confusingly Similar
The disputed domain name <hugobossoutletsale.com> is made up of the registered trademark HUGO BOSS and descriptive terms, “outlet” and “sale”. The disputed domain name is clearly confusingly similar to the registered trademark HUGO BOSS. The first part of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests in the disputed domain name.
The use made by the Respondent of the website at the disputed domain name <hugobossoutletsale.com>, where the Complainant’s trademark features prominently and apparently counterfeit products are offered for sale, make it hard to imagine that the Respondent could ever establish any rights or legitimate interests.
Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests in a domain name, are present in this case. The second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <hugobossoutletsale.com> was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a respondent has registered and is using a domain name in bad faith where:
“by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
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 <hugobossoutletsale.com>, be transferred to the Complainant.
Dated: July 11, 2014