WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Private Registration / George Kara
Case No. D2015-0666
1. The Parties
Complainant is HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG of Metzingen, Germany, represented by Dennemeye & Associates S.A., Germany.
Respondent is a Private Registration of Sidney South, New South West, Australia / George Kara, Armadale, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <hugoboss.melbourne> is registered with Crazy Domains FZ-LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2015, 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 Complainant on April 15, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 23, 2015.
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 Respondent of the Complaint, and the proceeding commenced on April 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2015. On April 27, 2015 and May 18, 2015, the Center received email communications from Respondent. Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on May 18, 2015.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 2, 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
Complainant is a group of German companies that develops and markets “premium fashion and accessories for men and women”. Complainant’s brands consist of the HUGO BOSS, BOSS, BOSS Orange, BOSS Green and HUGO marks, and cover a “comprehensive product range encompassing classic to modern apparel, elegant eveningwear and sportswear, shoes, leather accessories as well as licensed fragrances, eyewear, watches, children’s fashion, home textiles and mobile accessories”.
Complainant holds many trademark registrations around the world, dating back to September 8, 1980 and including the following: Community Trademark Nos. 000049254 and 006645204 for HUGO BOSS; International Trademark Registration No. 430400 for HUGO BOSS designating more than 40 countries; and International Trademark Registration No. 513257 for HUGO BOSS designating more than 35 countries.
Complainant also owns and operates multiple websites at domain names incorporating the HUGO BOSS mark, including <hugoboss.com> and <hugoboss.co.uk>.
The disputed domain name was registered on January 24, 2015 and resolves to a parked page for the Registrar.
5. Parties’ Contentions
Complainant alleges that it has trademark rights in the HUGO BOSS mark as evidenced by its worldwide registrations, that the HUGO BOSS mark has become internationally well-known, that the disputed domain name is identical to the HUGO BOSS mark, and that the addition of the new generic Top-Level Domain (gTLD) “.melbourne” does not have an impact on the overall impression of the disputed domain name.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name, has no rights in the HUGO BOSS trademark, and was not granted any license or authorization to use the HUGO BOSS mark or to apply for or register the disputed domain name.
Regarding bad faith registration and use, according to Complainant’s trademark registrations, Complainant’s priority date for the HUGO BOSS mark is at least as early as September 8, 1980. Complainant states that the HUGO BOSS mark has become well-known and notorious, such that Respondent registered the disputed domain name with knowledge of Complainant’s registered HUGO BOSS trademark. Complainant alleges that Respondent is using the disputed domain name in bad faith because it is using the disputed domain name to display a parked webpage hosted by the Registrar.
While Respondent responded to the Center with two emails, dated April 27, 2015 and May 18, 2015, Respondent did not file a formal response to the Complaint. The emails did not admit or deny any of the allegations.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has many trademark registrations reflecting its trademarks rights in the HUGO BOSS mark. The Panel further finds that the disputed domain name is identical or confusingly similar to the HUGO BOSS mark because it incorporates the entirety of the trademark with no additions or modifications, other than the addition of “melbourne”.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The evidence of record supports Complainant’s unrebutted allegations that Respondent is not authorized to use the HUGO BOSS mark and is not sponsored by or affiliated with Complainant in any way. Further, the Panel accepts that the disputed domain name was registered with the intention of referencing Complainant’s mark in order to run a parked webpage, as the disputed domain name does not appear to be in use for any bona fide offering of goods or services. It is clear that Respondent’s use of the HUGO BOSS mark in the disputed domain name is not a bona fide use. Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name; Respondent, by virtue of its default, has failed to rebut that showing.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent did not contest Complainant’s allegations of bad faith registration and use. It is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name on January 24, 2015, since Complainant had trademark registrations in the HUGO BOSS mark for more than 35 years prior to the registration of the disputed domain name, and has used the HUGO BOSS mark extensively worldwide.
There is also evidence of bad faith use. While there is no evidence of positive action being taken by Respondent in relation to the disputed domain name, inaction can be considered use within the meaning of the UDRP. See Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. Respondent is passively holding the disputed domain name for a parked webpage, which prior UDRP decisions have held to be bad faith use, particularly when the disputed domain name incorporates a famous trademark, as is the case here. See, e.g., Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544 (when respondent failed to respond and was passively holding the disputed domain name, the panel found that because of the fame of the infringed mark, “respondent must have known of it before registering the domain names and cannot use them without infringing the complainant’s rights”); The Net-A-Porter Group Limited v. Registration Private and Domains By Proxy, LLC of Arizona, United States of America and Alan Ballmer and Last Minute Trader, WIPO Case No. D2015-0449 (same).
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 <hugoboss.melbourne> be transferred to Complainant, namely HUGO BOSS AG.
Lawrence K. Nodine
Date: June 16, 2015