WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Name Redacted
Case No. D2017-0338
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 Name Redacted.1
2. The Domain Names and Registrar
The disputed domain names <cheaphugobossbestonline.com>, <cheaphugobossonlineoutlet.com>, <cheaphugobossoutlets.com>, <cheaphugobosssaleoutlet.com>, <cheaphugobosssaleshop.com>, <hugobossbestcheap.com>, <hugobossbestonline.com>, <hugobossbestoutletshop.com>, <hugobossbestshop.com>, <hugobosscheapoutlet.com>, <hugobosscheapoutletonline.com>, <hugobosscheapoutlets.com>, <hugobosscheapsaleoutlet.com>, <hugobossonlineoutletcheap.com>, <hugobossoutletcheap.com>, <hugobossoutletcheaponline.com>, <hugobossoutletshop.com>, <hugobossoutletuk.com>, <hugobossoutletus.com>, <hugobosssaleoutletcheap.com>, <hugobosssaleoutletcheap.org>, <hugobosssaleoutlet.com>, <hugobosssaleoutletshop.com>, <hugobosssaleshop.com>, <hugobosssalestore.com>, <hugobossshoponline.com>, <hugobossshopoutlet.org>, <hugobossukcheapsale.com>, <hugobossukoutlet.com>, <hugobossusoutlet.com>, and <shophugobosssaleoutlet.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 21, 2017, 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 March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. On March 15, 2017, the Center received email communications from an individual who indicated that the disputed domain names had been registered using the Respondent’s contact details without authorization. The Center emailed the Parties on April 13, 2017, notifying them of the Respondent identity issue. On April 25, 2017, the Center indicated it would proceed to appoint the Administrative Panel in this matter.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 27, 2017. 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 comprise a well-known leading fashion company, founded in 1924 in Germany. It manufactures, markets and retails clothing, shoes and other accessories, as well as fragrances, skincare products, watches, eyewear and kidswear under its HUGO BOSS trade marks. The Complainants employs almost 14,000 people worldwide. They also operate established websites and related domain names which comprise the HUGO BOSS trade marks, including “www.hugoboss.com”. The Hugo Boss website provides information regarding the Complainants and their products and services, and also allows customers to purchase the Complainants’ products online.
The Complainants have trade mark registrations worldwide for the marks HUGO BOSS, alone or in combination with other words or device elements. The Complainants have trade mark registrations for HUGO BOSS covering a variety of goods and services including clothing, footwear and headgear in numerous jurisdictions around the world, dating back to 1983.
The disputed domain names were registered between January and December of the year 2016.
5. Parties’ Contentions
The Complainants state to be the owner of the trade mark HUGO BOSS. Those trade marks have been considered internationally well-known in prior UDRP cases.
The disputed domain names are made up of the registered trade mark HUGO BOSS and the descriptive or geographic terms “cheap”, “uk”, “us”, “sale”, “online”, “best”, “store”, “shop” and “outlet”. Thus, the Complainants argue that the disputed domain names are identical or at least, that the disputed domain names are clearly confusingly similar to the registered trade mark HUGO BOSS.
The Respondent has no legitimate right to the name HUGO BOSS. The Complainants have not licensed or otherwise authorized the Respondent to use their trade marks or to apply for any domain name incorporating the trade mark. The Respondent’s name does not coincide with the disputed domain names.
The Complainants never consented nor authorized the registration of domain names. Furthermore, knowing the impressive number of trade marks and domain names registered by the Complainants and their fame, goodwill and notoriety, there is no imaginable circumstances under which the Respondent could legitimately use the disputed domain names.
The Complainants state that it is clear that HUGO BOSS is a well-known trade mark and that the Respondent must have had knowledge of the Complainants’ rights when it registered the disputed domain names.
The Complainants state that there is no bona fide offering of goods or services on the websites which lead to clear imitations of the HUGO BOSS official website as the selling of clothing articles under the name HUGO BOSS was not allowed by the Complainant. Except for <cheaphugobossonlineoutlet.com>, <cheaphugobosssaleoutlet.com>, <hugobossukcheapsale.com>, and <hugobossoutletuk.com>, the rest of the disputed domain names included in this Complaint are leading to a webpage on which the trade mark HUGO BOSS appears and the design of the original website of the Complainants is reproduced or imitated.
Regarding the disputed domain names <cheaphugobossonlineoutlet.com>; <cheaphugobosssaleoutlet.com>; <hugobossukcheapsale.com>; and <hugobossoutletuk.com>, they are not showing (as of the time the screenshots were taken) any activity. The Complainants state that the disputed domain names have been registered to create confusion and mislead the Internet user into believing that the Complainants and the Respondent are affiliated or that the Complainants endorse the website which the Respondent’s 31 domain names resolve. The Respondent re-created or imitated in all the websites to which the disputed domain names are leading the design of the original website of the Complainants, “www.hugoboss.com”. According to the Complainants, this clearly represents an attempt to mislead the consumer and attract for commercial gain Internet users who could think it is a website managed by the Complainants.
The Complainants never authorized the sale of their products by the Respondent. This unauthorized sale of products by the Respondent on the 31 websites gives the wrong impression that they are genuine Hugo Boss websites and are clearly uses in bad faith. Furthermore, the registrations of an important batch of domain names (31 in this case) by the same registrant all including the trade mark of the Complainants can as well be interpreted as a clear sign of cybersquatting.
The Complainants request the transfer of the disputed domain names.
On March 14, 2017, the Center received a communication from an attorney representing an individual whose name matched the named Respondent (“named Respondent”). The attorney explained that the named Respondent is a housewife and a mother and does not engage in any online selling and has not registered the disputed domain names. The attorney explained that her client’s identity was compromised and therefore her client was trying to transfer the disputed domain names to the Complainant by reaching the Registrar of the disputed domain names.
On March 15, 2017, the attorney emailed the Complainant and she reiterated that her client was not related to this case or the registration of the disputed domain names and that the disputed domain names had been registered using the named Respondent’s contact details without authorization. She added that she wanted to end the dispute and that, optionally, her client was consenting to the transfer of the disputed domain names to the Complainant.
6. Discussion and Findings
As noted above, the Complainant has requested transfer of the disputed domain names and the named Respondent has stated in response a non-objection to the transfer of the disputed domain names to the Complainants.
It is well-accepted that a respondent may not disclaim responsibility for content appearing on the page to which its domain name resolves. The Panel sees no reason to treat the scenario in this case any differently: if a registrant uses the contact details of a third person for registration purposes (here, fraudulently), that third person (here, the named Respondent) would be in a position to impact the disposition of the domain name (here, a consent to transfer). Having made its bed, the Respondent now lies in it. The Panel also notes that the mere fact itself or fraudulently using the details of a third party to obtain a domain name registration evidences clear bad faith, and a lack of rights or legitimate interests.
Section 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition provides “Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the Respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission)...”.
As the panel held in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, “A genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207)”. This approach has been followed in a number of other decisions. See, for example, Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336; Nutri/System, IHPC, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0864; and KBC Group N.V. and KBC Bank N.V. v. Bank Dir, Bankgroup, WIPO Case No. D2008-0446.
The named Respondent’s answer was that the disputed domain names have been registered using the Respondent’s contact details without authorization. Due to this fact, the Panel does not consider it appropriate to address the merits of the Complaint. It seems clear that the named Respondent has been a victim of identity theft and due to the special circumstances of this case, the Panel has redacted the Respondent’s name from the caption and body of this decision and decided the case based on a consent to transfer basis.
For good measure, the panel addresses the substantive elements in abbreviated form.
I. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to HUGO BOSS and finds that all the disputed domain names contain the Complainant’s mark in its entirety, with the addition of only descriptive terms and the Top-Level Domain (“gTLD”). Pursuant to the consensus view of UDRP panelists, this satisfies the requirements of the Policy under this element.
II. Rights and Legitimate Interests; Registration and Use in Bad Faith
The Panel is satisfied that the ultimate entity responsible for the registration of the disputed domain names has made such registrations illegitimately using the identity of a third party without their permission. The registrant used the disputed domain names in order to sell goods under the Complainant’s trademark in a manner which imitates the Complainant’s authentic websites leading to consumer confusion as to the source, sponsorship, affiliation or endorsement of the websites.
Under the circumstances, the Panel finds that such actions by the registrant do not provide it with any rights or legitimate interests in the disputed domain names, and moreover, demonstrate to the satisfaction of the Panel that they were registered and 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 names, <cheaphugobossbestonline.com>, <cheaphugobossonlineoutlet.com>, <cheaphugobossoutlets.com>, <cheaphugobosssaleoutlet.com>, <cheaphugobosssaleshop.com>, <hugobossbestcheap.com>, <hugobossbestonline.com>, <hugobossbestoutletshop.com>, <hugobossbestshop.com>, <hugobosscheapoutlet.com>, <hugobosscheapoutletonline.com>, <hugobosscheapoutlets.com>, <hugobosscheapsaleoutlet.com>, <hugobossonlineoutletcheap.com>, <hugobossoutletcheap.com>, <hugobossoutletcheaponline.com>, <hugobossoutletshop.com>, <hugobossoutletuk.com>, <hugobossoutletus.com>, <hugobosssaleoutletcheap.com>, <hugobosssaleoutletcheap.org>, <hugobosssaleoutlet.com>, <hugobosssaleoutletshop.com>, <hugobosssaleshop.com>, <hugobosssalestore.com>, <hugobossshoponline.com>, <hugobossshopoutlet.org>, <hugobossukcheapsale.com>, <hugobossukoutlet.com>, <hugobossusoutlet.com>, and <shophugobosssaleoutlet.com> be transferred to the Complainant, HUGO BOSS AG.
Pablo A. Palazzi
Date: May 21, 2017
1 The Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.