WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. dsfgsdfgsdfgdsfg
Case No. D2015-0916
1. The Parties
The Complainants are HUGO BOSS Trade Mark Management GmbH & Co. KG (the “first Complainant”) and HUGO BOSS AG (the “second Complainant”) of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.
The Respondent is dsfgsdfgsdfgdsfg of Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <hugobossoutletshopcheap.com> (the “Disputed Domain Name”) is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 2, 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.
On June 4, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 8, 2015, the Complainants confirmed their request for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on June 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2015.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 6, 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 part of the Hugo Boss Group which was founded in 1924 and a leader in the premium and luxury apparel market. The Hugo Boss Group has almost 12,500 employees and about 7,100 retail stores, including those operated by department stores, specialist stores and franchise partners. Online stores are also operated in Germany, the United Kingdom of Great Britain and Northern Ireland, France, Spain, Italy, the Netherlands, Belgium, Austria, Switzerland, the United States of America and China. Net sales in 2013 were about EUR 2.4 billion.
The Hugo Boss Group uses the trademarks BOSS, BOSS ORANGE, BOSS GREEN, HUGO and HUGO BOSS. The first Complainant owns various registrations for the trademark HUGO BOSS worldwide, including the following:
March 26, 2008
June 3, 1977
June 30, 1986
The second Complainant holds various domain name registrations, including <hugo.com>, <hugoboss.com> and <hugoboss.co.uk>, and operates websites resolved from these domain names. The domain name <hugoboss.com> was registered on April 24, 1997 and the website resolved from it offers the online sale of products under the trademark HUGO BOSS.
The trademark HUGO BOSS has been the subject of past disputes under the Policy, including Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin / Personal, Loung Dinh Dung, WIPO Case No. D2011-0564; HUGO BOSS AG, HUGO BOSS Trademark Management GmbH & Co KG v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise Ltd, WIPO Case No. D2012-0273; Hugo Boss Trademark Management GmbH & Co KG, Hugo Boss AG v. freeoakley / WhoisGuard, WIPO Case No. D2013-0540 and Hugo Boss Trademark Management GmbH & Co KG v. Guanjing / Daziran, WIPO Case No. D2014-0801. In particular, the panel in Hugo Boss Trademark Management GmbH & Co KG v. Domain Admin / Personal, Loung Dinh Dung, supra held that the HUGO BOSS trademark was a well-known mark.
The Disputed Domain Name was registered on April 10, 2015. As of May 29, 2015, the Disputed Domain Name resolved to a website which is entirely in English and prominently featured the trademark HUGO BOSS in relation to apparel. The website appears to provide shopping cart facilities for the purchase of products offered thereon. The website contained the statement “Powered By Hugo Boss, Hugo Boss Outlet, Hugo Boss Clothing, Hugo Boss Suits. © 2015” in the footer and claimed to offer “24/7 Phone Support” by “Hugo Boss”.
Very little information about the Respondent is available in this proceeding. The WhoIs information on the Disputed Domain Name identifies the Respondent’s organisation as “dsfgdsfgdsfg” and the street as “dsfgsdfgsdfgsdfg”.
5. Parties’ Contentions
The Complainants contend that:
1) The Disputed Domain Name is identical or confusingly similar to the Complainants’ trademark HUGO BOSS. It wholly incorporates the words “hugo boss”. The descriptive terms “outlet”, “shop” and “cheap” in the Disputed Domain Name do not influence the comparison of the Disputed Domain Name and the trademark HUGO BOSS;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants have not licensed or otherwise authorised the Respondent to use their trademarks or to apply for any domain name incorporating the same. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The website resolved from the Disputed Domain Name shows online selling activities not authorized by the Complainant. There is no holder of the trademark HUGO BOSS at the trademark offices or Registry of Companies other than the Complainants. The Respondent’s name does not coincide with the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent must have had knowledge of the Complainants’ rights when the Disputed Domain Name was registered. There was no bona fide offering of goods or services on the website resolved from the Disputed Domain Name. It is obvious that the Disputed Domain Name was registered to create confusion and mislead Internet users into believing that the Complainants and the Respondent are affiliated or that the Complainants endorse the website resolved from the Disputed Domain Name. The Respondent is attempting to mislead consumers and attract for commercial gain Internet users into thinking that the website resolved from the Disputed Domain Name is managed by the Complainants.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The default language of the proceeding is Chinese because the language of the Registration Agreement of the Disputed Domain Name was in Chinese. The Complainants have requested that English be adopted instead as the language of the proceeding. Having considered the circumstances, the Panel exercises its discretion under paragraph 10 of the Rules and grants the Complainants’ request. In doing so, the following factors were taken into consideration:
a) English is a common language of global communication;
b) The Complainants have submitted the Complaint in clear and grammatical English;
c) The website resolved from the Disputed Domain Name is entirely in clear and grammatical English, thereby indicating that the Respondent has the ability to communicate in English;
d) The Respondent has chosen not to participate in the proceeding by failing to file a Response;
e) No administrative benefit to the proceeding may foreseeably arise if the Panel were to insist on the default language. On the other hand, requiring the Complainants to submit the Complaint in Chinese would likely lead to additional burden to the Complainants as well as delay in the proceeding; and
f) The Panel is bilingual in English and Chinese and is equipped to deal with documents submitted in the Chinese language had the Respondent opted to do so.
To succeed in the proceeding, the Complainants have to show that all three limbs of paragraph 4(a) of the Policy are established on the facts, namely:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The evidence shows that the first Complainant owns registrations for the trademark HUGO BOSS. The Panel has no doubt that the first Complainant has rights in the trademark HUGO BOSS. The Disputed Domain Name incorporates the trademark HUGO BOSS it is entirety. The Panel accepts that the descriptive suffixes “outlet”, “shop” and “cheap” in the Disputed Domain Name do not assist to distinguish the Disputed Domain Name from the trademark HUGO BOSS. In accordance with the consensus view of past UDRP panels, the Disputed Domain Name is confusingly similar to the trademark HUGO BOSS. Hence, the first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainants have confirmed that the Respondent is not licensed or authorised to use the trademark HUGO BOSS or register it in the Disputed Domain Name. There is nothing in the evidence to suggest that the Respondent is known by the trademark HUGO BOSS or the Disputed Domain Name. Regardless of this, the website resolved from the Disputed Domain Name contains obvious claims and suggestions which associate it with the trademark HUGO BOSS (e.g., the copyright notice in the footer) In the absence of any cogent explanation, the Disputed Domain Name having been used in relation to a website which purports to offer products for sale online, nullifies the probability that the Disputed Domain Name is being used for a legitimate noncommercial purpose. In the circumstances, the Panel holds that a prima facie case under the second limb of paragraph 4(a) of the Policy is supported on the evidence. Since no Response was filed, the prima facie case is unrefuted and accordingly the Panel finds that the second limb of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
Based on the evidence before the Panel, the Panel is satisfied that the trademark HUGO BOSS is sufficiently well-known in the luxury apparel market such that it is highly inconceivable that the Respondent’s selection of the Disputed Domain Name and the prominent use of the words “Hugo Boss” on the website resolved from the Disputed Domain Name in relation to apparel to be merely coincidental and without knowledge of the trademark HUGO BOSS. In fact, the Panel notes that the typeface of the words “Hugo Boss” at the header of the website is essentially identical to that used on the Complainants’ website at “www.hugoboss.com”.
Paragraph 4(b)(iv) of the Policy highlights the following scenario of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The website resolved from the Disputed Domain Name in offering the sale of apparel in close association with the trademark HUGO BOSS online must only have been for the purpose of commercial gain. Having reviewed the circumstances, the Panel is convinced that the Respondent must have selected the Disputed Domain Name to attract Internet users for such commercial gain by creating a likelihood of confusion with the trademark HUGO BOSS as to the source, sponsorship, affiliation, or endorsement of the website and the products offered thereon. The facts fall squarely within the scenario of bad faith in paragraph 4(b)(iv) of the Policy.
Further, the Panel finds the name, organisation and street address of the Respondent as reflected on the WhoIs information to be highly suspicious and unbelievable. All three are made up of unpronounceable variant combinations of the letters “s”, “d”, “f” and “g”. Without the benefit of any explanation, the most probable and logical conclusion that may be drawn is that these particulars are fictitious. It has been held by past UDRP panels that a domain name registrant has a duty to act honestly, including providing valid contact particulars. A deliberate failure to do so is a basis for finding bad faith use and registration (see L’Oréal v. Wen Tao, WIPO Case No. D2012-0521, Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun, WIPO Case No. D2011-2106; Farouk Systems Inc. v. David, WIPO Case No. D2009-1245).
In view of the above, the Panel holds that the third limb of paragraph 4(a) of the Policy is also established in this proceeding.
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 <hugobossoutletshopcheap.com> be transferred to HUGO BOSS AG.
Kar Liang Soh
Date: July 15, 2015