WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Li Chen
Case No. D2016-1623
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 Chen of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <cheaphugobossukoutlet.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 August 9, 2016. On August 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 9, 2016.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on September 19, 2016. 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 members of the Hugo Boss group of companies (collectively referred to herein as "the Complainant"). The Complainant is a worldwide and internationally famous fashion house. Its name and reputation have been recognized in several prior decisions under the Policy, see for example, Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin / Personal, Loung Dinh Dung, WIPO Case No. D2011-0564. It has operated since 1924; it currently employs approximately 14,000 employees and generates net sales of the order of EUR 2.8 billion. It owns trademark registrations comprising the words HUGO BOSS in most countries and regions throughout the world, including China, covering a range of goods including clothing, jewellery and perfume. For instance, the Complainant is the owner of International trademark registration designating China no. 637658 HUGO BOSS, registered on May 31, 1995 for goods in International classes 29, 30, 31, 32 and 33. The Complainant also owns several domain names incorporating the word "hugoboss" including <hugoboss.com> and <hugoboss.co.uk>.
No information is available concerning the Respondent save that the Respondent appears to be resident in Guangzhou in China.
The disputed domain name was created on March 30, 2016.
The disputed domain name does not currently resolve to an active webpage.
At the time of filing the Complaint the disputed domain name resolved to a website headed with the Complainant's BOSS logo and offering for sale items purporting to be HUGO BOSS clothing, handbags and other goods.
5. Parties' Contentions
The Complainant submits evidence of registration of its HUGO BOSS trademark in many jurisdictions throughout the world including China. The Complainant contends that the disputed domain name is identical to its HUGO BOSS trademark as it wholly incorporates that mark and the comparison of the trademark to the disputed domain name will not be influenced by the addition of the respective terms "cheap", "uk" and "outlet". The Complainant states that it has not licensed or authorized the Respondent to use its trademark. The Complainant further contends that:
- the Respondent has no rights or legitimate interest in the name Hugo Boss;
- the Respondent's name does not coincide with the disputed domain name;
- the use being made of the disputed domain name by the Respondent is not a noncommercial or fair use;
- in view of the Complainant's many registered trademarks and their fame and goodwill there are no imaginable circumstances under which the Respondent could legitimately use the disputed domain name;
- the Respondent's use of the disputed domain name to resolve to a website which imitated the Complainant's website and offered goods for sale by reference to the Complainant's trademarks represents an attempt to attract, for commercial gain, users who think that it is a website associated with the Complainant.
Citing the prior decision under the Policy in Hugo Boss Trademark Management GmbH & Co. KG v. Guanjing / Daziran, WIPO Case No. D2014-0801, the Complainant submits that this "is a simple case of clear domain name hijacking for the purposes of commercial gain which the UDRP is designed to stop".
The Complainant requests transfer of the disputed domain name to Hugo Boss AG.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name wholly contains the Complainant's HUGO BOSS trademark with the addition only of the generic and descriptive words "cheap", "uk" and "outlet". The dominant particular of the disputed domain name is the Complainant's trademark, inevitably associating the disputed domain name with that trademark. The Complainant has abundantly demonstrated both registered trademark rights and a reputation in the trademark. Accordingly the Panel finds that the disputed domain name is confusingly similar with a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant asserts that it has not authorized the Respondent to use its trademark in the disputed domain name. At the time of filing the Complaint the disputed domain name resolved to a website designed to imitate the look and feel of the Complainant's website at <hugoboss.com> and featuring garments and handbags purporting to be Hugo Boss merchandise, advertised at a discounted price. There is no evidence as to whether or not the goods advertised at the disputed domain name are genuine Hugo Boss products. In any event, there is nothing at the website to accurately disclose the relationship, if any, between the Respondent and the Complainant. Indeed the most likely conclusion to be drawn by a consumer entering the website would be that it was the website of the Complainant or associated with, or authorized by the Complainant, see Oki Data Americas, Inc, v. ASD, Inc, WIPO Case No. D2001-0903. The Respondent's use of the disputed domain name cannot therefore constitute use of the disputed domain name in the bona fide offering of the goods at the site. It seems unlikely that the Respondent with an address in China would operate an authorized outlet in the United Kingdom of Great Britain and Nothern Ireland.
The Complainant has adequately demonstrated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has failed to rebut that case.
C. Registered and Used in Bad Faith
As shown in section 6B above the Respondent was, at the time of filing the Complaint, using the disputed domain name to point to a website designed to appear to be an official site of the Complainant or at least a website which had been authorized by, or associated with, the Complainant. The Respondent offered at that website discounted goods purporting to be the goods of the Complainant but without any explanation as to the relationship, if any, of the Respondent to the Complainant. That conduct was plainly misleading and amounted to an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation of the website or of products available at the website. The Respondent's use of the disputed domain name therefore falls within paragraph 4(b)(iv) of the Policy and constitutes bad faith use of the disputed domain name.
At the time of registering the disputed domain name the Complainant's trademark was already long established and internationally famous. There can be no doubt therefore that when registering the disputed domain name the Respondent had knowledge of the Complainant and its trademark. There is a reasonable assumption therefore that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant. That assumption is reinforced by the fact that it then proceeded to do that.
The Panel therefore finds that the disputed domain name was registered and was subsequently used in bad faith.
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, <cheaphugobossukoutlet.com> be transferred to Hugo Boss AG.
Desmond J. Ryan AM
Date: October 3, 2016