WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hugo Boss AG, Hugo Boss Trade Mark Management GmbH & Co. KG v. Dzananovic Enis
Case No. D2014-2216
1. The Parties
The Complainants are Hugo Boss AG, Hugo Boss Trade Mark Management GmbH & Co. KG, both of Metzingen, Germany, represented by Baker & McKenzie, United States of America.
The Respondent is Dzananovic Enis (with a Chinese name 张润发) of Manitoba, Canada / Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <bossonlinesale.com> is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 18, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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 December 23, 2014, the Center sent an email to the parties in both Chinese and English regarding the language of the proceeding. On December 23, 2014, the Complainant confirmed its request that English be the language of the proceeding.
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 Chinese and English, and the proceeding commenced on January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 26, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on February 4, 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 Complainants are designers, manufacturers and retailers of high-end fashion, fragrances, accessories and related products and services. Hugo Boss Trade Mark Management GmbH & Co. KG is the owner of trademark registrations for the marks HUGO BOSS, BOSS, BOSS HUGO BOSS, BOSS BLACK, BOSS GREEN, BOSS ORANGE, BOSS WOMAN, and variations thereof ("the BOSS marks") in the United States and many other countries worldwide.
The Complainants and their predecessors in interest started use of the BOSS marks since as early as 1970 in the United States. Hugo Boss AG owns and operates a number of websites bearing the domain names <store-us.hugoboss.com>, <hugo.com>, <hugoboss.com>, <hugoboss.de>, <hugoboss.co.uk>, etc. The Complainants sponsor various sporting and fund-raising events under the BOSS marks. They have regularly advertised their products under the BOSS marks in prominent and widely-distributed magazines and newspapers. Over the years and as a result of substantial advertising and promotional efforts and prominent and continuous use of the BOSS marks, the Complainants have become widely-recognized to the purchasing public as the source of products and services bearing the BOSS marks. The BOSS marks are famous and the Complainants' Hugo Boss name has become synonymous with high quality goods and services.
The disputed domain name was registered on November 13, 2014.
5. Parties' Contentions
1. The disputed domain name is confusingly similar to the Complainants' BOSS marks as it contains the word "Boss" in its entirety with the addition of the generic terms "online" and "sale".
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered decades after the Complainants' BOSS marks achieved worldwide consumer recognition, after the Complainants registered the BOSS marks, and after the Complainant registered and began using their various domain names. The Respondent has not been licensed by the Complainants nor authorized to use the BOSS marks and the disputed domain name. The website to which the disputed domain name resolves is used to sell unauthorized and/or counterfeit goods under the BOSS marks. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Respondent's website is misleading and diverts consumers and creates an initial impression of association with the Complainants.
3. The disputed domain name was registered and is being used in bad faith. The registration of a domain name incorporating a famous mark constitutes bad faith. The Respondent is intentionally attempting to attract Internet users to its website for commercial gain through misleading use of the Complainants' BOSS marks and images of Hugo Boss merchandise and the sale of the said merchandise at discounted prices.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Language of the Proceeding
Paragraph 11(a) of the Rules stipulates 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 Complaint was filed in English but the language of the Registration Agreement is Chinese. The Complainant requested that the language of the proceeding be English. Based on information that the Complainants have, the Respondent is very knowledgeable of and conversant in English. The Respondent's website at "www.bossonlinesale.com" is entirely in English. There is no text in the Chinese language. The Complainants state that they are puzzled why the Registrar has represented that the language of the Registration Agreement is Chinese whereas on the Registrar's website the registration agreement is in English. In any event, the Respondent appears to be a resident of Canada per the WhoIs information and from his Facebook profile, extracts of which were submitted in evidence, it is evident he is able to communicate in English.
Having had regard to the circumstances of this case, in the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel holds that English shall be the language of the administrative proceeding in this case. The Complainants have provided sufficient evidence which make it apparent that the Respondent is very comfortable with English. The Panel notes the Respondent has not objected nor presented reasons why Chinese should be the language of the proceeding. He has moreover been operating his online business in English. Hence, in fairness to both parties, the Panel finds it appropriate to make its ruling in English.
Substantive Elements of the Proceeding
A. Identical or Confusingly Similar
The Panel finds that the Complainants have clear rights to the BOSS mark and that it is a well-known mark.
The only difference between the disputed domain name and the BOSS mark is the addition of the generic words "onlinesale". It is a well-established principle that generic or descriptive terms or phrases are not sufficient to remove the confusion between a domain name in dispute and a trade mark. The BOSS mark is clearly identifiable within the disputed domain name and anyone looking at the disputed domain name would expect that it probably resolves to a website where Internet users can find information pertaining to and/or purchase apparel or other goods of the Complainants. The phrase "onlinesale" in this instance therefore adds to the confusion with the Complainants' BOSS marks.
The Panel therefore finds that the Complainants have established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel also finds, having regard to the fame of the BOSS mark and the absence of any relationship or authorization from the Complainants to the Respondent's use of the BOSS marks and registration of the disputed domain name, that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Having done so, the burden shifts to the Respondent to show, with evidence, circumstances which would support a claim of rights or legitimate interests in respect of the disputed domain name. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"). There is, however, no evidence that the Respondent is commonly known by the disputed domain name, nor is there evidence that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. No explanation has been forthcoming from the Respondent. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel is satisfied that the second element of paragraph 4(a) of the Policy has been established.
C. Registered and Used in Bad Faith
As the Complainant has not provided specific evidence to prove that the goods sold on the Respondent's website are in fact counterfeit, the Panel does not base its decision on the suggestion that the goods are counterfeit.
The choice of the disputed domain name and the content of the website to which the disputed domain name resolves reflect a clear knowledge by the Respondent of the Complainants and their BOSS marks. The domain name clearly alludes to the offering of (and the offering of information about) Hugo Boss goods, possibly at discounted prices. The Complainants' BOSS marks are reproduced on the Respondent's webpage. All these point to a clear intention by the Respondent to "attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location" (paragraph 4(b)(iv) of the Policy). Many earlier UDRP decisions of panels have established the principle that the registration of a domain name incorporating a famous mark constitutes bad faith.
The Panel is therefore satisfied that the third element of paragraph 4(a) of the Policy has been established.
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 <bossonlinesale.com> be transferred to the Complainant.
Date: February 5, 2015