WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. zeng aiqin
Case No. D2016-2296
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 zeng aiqin of United States of America.
2. The Domain Name and Registrar
The disputed domain name <boss-hongkong.info> 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 November 10, 2016. On November 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the disputed domain name was first registered on December 14, 2011 and the Respondent has been the registrant since at least November 30, 2015;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 November 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 22, 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 both members of the Hugo Boss corporate group. According to the Complaint, the Hugo Boss group was founded in 1924. It manufactures and supplies a wide range of clothing and other fashion accessories in what it refers to as the premium and luxury segments of the global apparel market. The group employs some 14,000 people around the world. It had net sales of EUR 2.8 billion in fiscal year 2015.
The first Complainant is the owner of numerous registered trademarks around the world. For present purposes, it is sufficient to mention only a few:
(a) International Trademark registration No. 423213 BOSS registered on May 24, 1976 in class 28;
(b) International Trademark registration No. 456092 BOSS registered on October 9, 1980, in class 25;
(c) International Trademark Registration BOSS No. 773035 registered on August 16, 2001 in classes 9, 14, 18, 25, 28 and 34, designating amongst others China;
(d) European Union Trademark No. 001798099 BOSS registered on September 24, 2001 in classes 35, 38, 41;
(e) European Union Trademark No. 002342038 BOSS registered on June 8, 2006 in classes 23, 24, 26;
(f) European Union Trademark No. 000049221 BOSS registered on January 29, 2009 in classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 34, 35, 42;
(g) United States Trademark No. 1,023,305 BOSS registered on October 21, 1975 in class 25; and
(h) United States Trademark No. 2,927,139 BOSS registered on February 22, 2005 in class 2.
The second Complainant apparently is the holder of and operates the group's websites including, amongst others, "www.boss.com" and "www.hugoboss.com". Although this is not explicitly stated in the Complaint, the Panel infers that the second Complainant uses the first Complainant's trademarks under licence.
The disputed domain name resolves to a website which is largely in Chinese. The website appears to offer for sale a very wide range of what may be considered luxury or premium brand products. Just to list a few of the brands being advertised: LV (Louis Vuitton), Gucci, Chanel, Hermes, Dior, Burberry and Prada. At the time this decision was being prepared, the landing page featured prominently images of Mont Blanc watches and accessories, apparently being offered for sale.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint has been served or attempted to be served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, their trademark rights.
There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainants have proven ownership of at least the registered trademarks referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
The disputed domain name differs from the first Complainant's trademarks by the addition of the gTLD component, ".info", and "-hongkong".
Disregarding the ".info" gTLD, the disputed domain name contains the whole of the first Complainant's trademark and the geographical descriptor "Hong Kong" separated by a hyphen. Those additional elements do not detract from a finding of confusing similarity. If anything, they reinforce it by suggesting that the disputed domain name is, or is associated with, the trademark owner's Hong Kong presence. See, e.g., the many decisions referred to in paragraph 1.9 of the WIPO Overview 2.0.
Accordingly, the Panel finds that the Complainants have established that the disputed domain name is confusingly similar to the Complainants' trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainants. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainants state that they have not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with them or the Hugo Boss corporate group in any way.
The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
On the other hand, the disputed domain name resolves to a website which appears to offer for sale a wide range of products. Some of these products appear to be the products of the Complainants' corporate group but, as noted in section 4 above, they are just one of a very large number of brands which appear to be on offer. These other brands may be described as competitive with the Complainants' corporate group. It has long been established that such a use of the disputed domain name does not constitute a good faith offering of goods or services for the purposes of the Policy.
In these circumstances, the Complainants have established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainants have established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainants must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In this connection, the Complainants point out that a number of previous decisions under the Policy have accepted that the first Complainant's trademark is well-known around the world. The Panel accepts that is the case. The Panel also notes that the disputed domain name is being used to direct traffic to a website offering for sale a wide range of premium or luxury branded products. As noted in section 5B above, some of the products are those of the Complainants' corporate group, but it appears that a very wide range of the products come from competing brands.
In these circumstances, the Panel infers that the Respondent was well aware of the first Complainant's trademark when the Respondent registered the disputed domain name (whether that was in 2011 or some later date) and did so to take advantage of the trademark significance of the term "boss" as the first Complainant's trademark. Moreover, the use which has been made of the disputed domain name as described clearly falls within the concept of use in bad faith under the Policy.
Accordingly, the Panel finds that the Complainants have established the third requirement under the Policy also.
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, <boss-hongkong.info>, be transferred to the second Complainant.
Warwick A. Rothnie
Date: January 5, 2017