WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Li Hong
Case No. D2015-1240
1. The Parties
The Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG and Hugo Boss AG of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Li Hong of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <hugobossshopjapan.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2015. On July 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2015, 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.
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, and the proceedings commenced on July 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2015.
The Center appointed Masato Dogauchi as the sole panelist in this matter on September 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
Whereas the Respondent has not submitted any contentions, the followings are found to be the factual background of this case.
There are two Complainants having with a common grievance against the Respondent because there is a common legal interest in a relevant right or rights that are allegedly affected by the Respondent’s conduct. These Complainants are members of a large industrial group doing business in the premium and luxury segment of the global apparel market. The group owns a number of trademarks for HUGO BOSS all around the world. In particular, the Complainant HUGO BOSS Trade Mark Management GmbH & Co. KG has many registered trademarks including the words “hugo boss”. The Complainant HUGO BOSS AG owns and operates websites at numerous domain names incorporating the words “hugo boss”, such as <hugoboss.com>, <hugoboss.co.uk>and <hugo.com>.
The industrial group including the Complainants focuses on the development and marketing of premium fashion and accessories for men and women. It generated with almost 12,500 employees net sales of EUR 2.4 billion in fiscal year 2013, making it one of the most profitable listed apparel manufacturers in the world.
According to the WhoIs database, the Respondent is Li Hong, an individual with an address in Hong Kong, China.
This dispute concerns the disputed domain name <hugobossshopjapan.com>, registered by the Respondent on October 22, 2014.
5. Parties’ Contentions
The Complainants assert as follows:
The disputed domain name is identical or confusingly similar to the HUGO BOSS mark.
The Complainants have not licensed or otherwise authorized the Respondent to use their trademarks or to apply for any domain name incorporating the trademark.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since the website clearly shows online selling activities that are not agreed to by the Complainants.
The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any submission in this case, the following decision is rendered on a basis of the facts found by the submission from the Complainants.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainants must prove each of the following:
(1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The words “hugo boss” are found in the disputed domain name.
It is found that the Complainants have had rights in trademarks including the words “hugo boss” for many years.
The difference between the Complainants’ trademark and the disputed domain name is that the latter has some additional matter, “shopjapan.com”, appended. The letters “shopjapan” can easily divided into “shop” and “japan”. These words attached to “hugoboss” give an impression that the website is authorized by the Complainants and is selling HUGO BOSS items at a shop in Japan in the sense of cyberspace. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion “hugoboss” and is therefore irrelevant in the determination of confusing similarity between the disputed domain name and the HUGO BOSS mark.
Therefore, having considered the above differences, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainants have rights. The above requirement (1) provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied.
B. Rights or Legitimate Interests
It is not found that the Respondent has any rights or legitimate interests in respect of the disputed domain name. Otherwise, the Respondent should submit evidences to show its interests.
Since the Respondent is totally absent from this proceeding, the Panel finds on the available record that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The above requirement (2) provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied.
C. Registered and Used in Bad Faith
In consideration of the fame of the Complainants’ trademark, it is highly unlikely that the Respondent would not have known of the Complainants’ legal rights in the trademark HUGO BOSS at the time of the disputed domain name’s registration on October 22, 2014. In addition, in light of the fact that any word or words in “hugobossshopjapan.com” which bear reasonable relevance with the name or other characteristics of the Respondent cannot be found, there can be found no reasonable possibility of fortuity in the Respondent’s use of “hugoboss” in the disputed domain name.
It is found that the Respondent is using the disputed domain name in order to generate traffic to an online shop maintained in Japanese in which the Complainants’ trademark is shown and many HUGO BOSS items are displayed for sale. By doing this, the Respondent is, without authorization, using the Complainants’ trademark and misleading Internet users to a website they will likely assume is officially associated with the Complainants.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. The above requirement (3) provided for in the paragraph 4(a)(iii) of the Policy is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied.
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 <hugobossshopjapan.com> be transferred to the Complainant Hugo Boss AG.
Date: September 6, 2015