WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka

Case No. D2015-0640

1. The Parties

The Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG both of Metzingen, Germany; represented by Dennemeyer & Associates S.A., Germany.

The Respondent is Dzianis Zakharenka of Minsk, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <hugoboss.black>, <hugoboss.blue>, <hugoboss.pink>, and <hugoboss.red> (the “Domain Names”) are registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2015. On April 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 14, 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 April 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2015.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 21, 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

The Complainants are members of the “Hugo Boss” Group, which was founded in 1924, which designs, manufactures, and sells premium and luxury goods in the global apparel market (fashion and accessories for men and women). In 2013 it employed almost 12,500 employees and generated net sales of EUR 2.4 billion.

The Complainant HUGO BOSS Trademark Management & Co. KG has registered a number of trademarks, including:

- Community Trademarks HUGO BOSS registered on April 1, 1996 (No. 000049254) and on November 28, 2012 (n° 006645204);

- International device mark registration HUGO BOSS, registered on June 3, 1977 (No. 430400) designating 40 states, including Ukraine;

- International trademark registration HUGO BOSS, registered on April 10, 1987 (No. 513257) designating 35 states, including Ukraine.

These trademarks are hereafter together referred to as the “Trademarks”.

The Domain Names were registered on December 3, 2014.

5. Parties’ Contentions

A. Complainant

According to the Complainants, the Domain Names are identical to the Trademarks, as the words “Hugo Boss” are fully incorporated into the Domain Names. The Complainant submits that the trademark HUGO BOSS has been considered internationally well-known in prior URDP cases, such as Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin/Personal, Loung Dinh Dung, WIPO Case No. D2011-0564.

The Complainants state that the Respondent does not have any rights or legitimate interests in respect of the Domain Names, since

- the Complainant has not licensed or otherwise authorized the Respondent to use the Trademarks or to apply for any domain name incorporating the “Hugo Boss” name;

- the Respondent is not registered as the owner of a trademark containing the “Hugo Boss” name;

- the Respondent’s name does not coincide with the Domain Names;

- there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Names since the website contains a placeholder offering it for sale to third parties;

According to the Complainants, the Trademarks are well-known and the Respondent must have had knowledge of the Complainants’ rights when it registered the Domain Names. In addition, the Complainants point out, the Domain Names do not lead to active websites. The Complainants submit that the Domain Names obviously have been registered to create confusion and mislead Internet users into believing that the Complainants and the Respondent are affiliated. Furthermore, the Complainants state that the facts that the Respondent registered on the same date four domains containing the name “Hugo Boss”, without using them afterwards, while using extensions for colors often used by the Complainants in combination with their collections or products, clearly represent a pattern of bad faith.

The Complainants request the Domain Names be transferred to the Complainant HUGO BOSS AG.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainants have shown that they have rights in the Trademarks. The Trademarks consist of the name “Hugo Boss”, which is included in its entirety in the Domain Names. The addition of the generic Top Level Domains (“gTLDs”) “.red”, “.pink”, “.blue”, “.black” does not change the overall impression, as the applicablegTLD suffix in a domain name is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2).

Therefore, the Panel finds that the Domain Names are identical or, in any case, confusingly similar to the Trademarks.

B. Rights or Legitimate Interests

The Complainants have to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Names (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not commonly known by the Domain Names and has not acquired trade mark rights in the Domain Names. The Complainants have not authorized, licensed, or otherwise consented to the Respondent’s registration and use of the Domain Names.

Furthermore, also taking into account the reputation of the Trademarks and the name HUGO BOSS, the Panel cannot conceive of any fair use of the Domain Names which would not infringe the Complainant’s rights in the Trademarks.

In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

Based on the information and the documents provided by the Complainants, the Panel assumes that at the time of registration of the Domain Names the Respondent was or should have been aware of the Trademarks.

First, the oldest registration of the Trademarks on which the Complainants rely predates the registration of the Domain Names by 37 years. One of the designated States for the registration is Ukraine, the state of domicile of the Respondent.

Secondly, the name “Hugo Boss”, which is incorporated in its entirety in the Domain Names, is not a name that a person wishing to register a domain name would accidently think of.

In addition, if the Respondent had not actually been aware of the Complainants or the Trademarks, a small effort on its part would have revealed those rights. A simple trade mark register search would have informed the Respondent of the existence of the Trademarks (and many other trademarks of the Complainants incorporating the name “Hugo Boss”).

Under these circumstances, the Panel concludes that the Domain Names have been registered in bad faith.

The fact that the Domain Names at this stage do not appear to resolve to active websites does not imply they are not being used. As set out in WIPO Overview 2.0 (paragraph 3.2), the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.

In this case the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name:

- the reputation of the Trademarks and the likelihood that the Respondent was aware or should have been aware of the Complainants’ rights in the Trademarks;

- the lack of a Response of the Respondent;

- the fact that the Written Notice sent by the Center to the Respondent’s address registered in the WhoIs was refused due to an incorrect contact name, indicating that the Respondent has intentionally provided incorrect contact information to evade service

Therefore, the Panel concludes that the Domain Names have been registered and are being used in bad faith.

7. Decision

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 <hugoboss.black>, <hugoboss.blue>, <hugoboss.pink> and <hugoboss.red> be transferred to the Complainant HUGO BOSS AG.

Wolter Wefers Bettink
Sole Panelist
Date: June 2, 2015