WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Max Brauer, CloudStudio
Case No. D2014-2029
1. The Parties
Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
Respondent is Max Brauer, CloudStudio of Mexico, Mexico.
2. The Domain Name and Registrar
The disputed domain name <hugoboss.moda> (the "Domain Name") is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 18, 2014. On November 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 30, 2014.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 8, 2015. 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 Hugo Boss Group was founded in 1924. It focuses on the development and marketing of premium fashion and accessories for men and women. In fiscal year 2013 it generated net sales of EUR 2.4 billion.
Complainants' brands include Boss, Boss Orange, Boss Green, and Hugo. They cover products encompassing classic to modern apparel, elegant eveningwear, sportswear, leather accessories, licensed fragrances, eyewear, watches, children's fashion, home textiles and mobile accessories.
Hugo Boss's marketing includes targeting marketing measures, print and out-of-home media, and digital marketing.
Complainants own worldwide trademark registrations for HUGO BOSS (the "Mark" or the "HUGO BOSS Mark") including in the United States of America (e.g., U.S. Registration Numbers 2,419,483 (registered in January 2001) and 2,256,567 (registered in June 1999) and Mexico Registration Numbers 1237632 (registered in September 2011) and 405755 (registered in February 1992). Complainant HUGO BOSS AG owns and operates websites at numerous domain names that incorporate the Mark (e.g., <hugo.com> and <hugoboss.com>).
The Domain Name was registered on September 29, 2014.
5. Parties' Contentions
The HUGO BOSS Mark has been considered internationally well-known in prior UDRP cases. The Domain Name is identical to the Mark as it wholly incorporates the words "hugo boss." Adding the generic top-level domain ("gTLD") ".moda" does not have any impact on the overall impression of the dominant portion of the HUGO BOSS Mark and is therefore irrelevant in determining confusing similarity.
Complainants have not licensed or otherwise authorized Respondent to use the Mark or apply for a domain name incorporating the Mark. There is no evidence that Respondent is making a legitimate non-commercial or fair use of the Domain Name insofar as the website is still on hold and offered to be sold to third parties. Respondent's name does not coincide with the Domain Name.
The Mark is well-known and Respondent must have had knowledge of the Complainants' rights when it registered the Domain Name. There is no bona fide offering of goods or services on the website associated with the Domain Name. The sentence on the website could not be more self explanatory: "The domain <hugoboss.moda> is listed for sale for $25,000. To purchase this domain name, contact email@example.com". This indicates that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark, namely the Complainants or a competitor for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the Domain Name. Furthermore, choosing the extension ".moda", which means "fashion" in Spanish, is directly related to the field in which Complainants use the Mark. This evidences Respondent's intent to get money from Complainants for the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainants and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainants prove each of the three elements set forth therein to obtain an order that the Domain Name should be cancelled or transferred.
A. Identical or Confusingly Similar
It is uncontested that Complainants have established worldwide rights in their well-known HUGO BOSS Mark long before Respondent registered the Domain Name in September 2014. These rights were established by long-standing use and through trademark registrations including: U.S. Registration Numbers 2,419,483 (registered in January 2001) and 2,256,567 (registered in June 1999) and Mexico Registration Numbers 1237632 (registered in September 2011) and 405755 (registered in February 1992).
The Domain Name consists of the Complainants' HUGO BOSS Mark in its entirety and the suffix ".moda". It is an accepted principle that the addition of suffixes such as ".moda", being a gTLD is not a distinguishing factor. Consequently, the Panel finds that the Domain Name is identical to the Complainants' HUGO BOSS Mark.
The Panel therefore holds that Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants contend that Respondent has no rights or legitimate interests in the Domain Name. It is undisputed that Complainants have not licensed or otherwise permitted Respondent to use the HUGO BOSS Mark in any manner, including as a domain name. Furthermore, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the Domain Name insofar as the website is on hold and Respondent has offered to sell the Domain Name.
Complainants have raised a prime facie presumption of Respondent's lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that the Complainants have carried their burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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."
These criteria are not exclusive and the Panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the Domain Name.
The Panel concludes, on the evidence submitted by Complainants, that Respondent has registered and used the Domain Name in bad faith. Complainants' long-standing rights in the HUGO BOSS Mark are uncontroverted, as is the fact that Respondent registered the Domain Name long after Complainants established their rights in the Mark worldwide. Respondent registered the Domain Name <hugoboss.moda>, which is identical to Complainants' well-known HUGO BOSS Mark, without any rights or legitimate interests in the Domain Name. According to a WhoIs document made of record by the Complainants, the website title provided for the website associated with the Domain Name is: "The domain Hugoboss.moda is listed for sale for $25,000. To purchase this domain name contact firstname.lastname@example.org." These undisputed facts lead to the conclusion that Respondent knew of Complainants' rights in the Mark and the value of those rights when it registered the Domain Name.
Respondent has attempted to sell the Domain Name for a profit. Thus the Panel finds that Respondent no doubt registered and is certainly using the Domain Name primarily for the purpose of selling, renting, or otherwise transferring registration of it to Complainants or another party for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the Domain Name. Such conduct constitutes bad faith. See paragraph 4(b)(i) of the Policy.
The Panel therefore holds that Complainants have satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hugoboss.moda> be transferred to Complainant HUGO BOSS AG.
Date: January 12, 2015