WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Ponomarev A

Case No. D2015-1874

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 Ponomarev A of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <hugoboss.moscow> is registered with ANO Regional Network Information Center dba RU-CENTER (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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, and stating that the language of the registration agreement for the disputed domain name was Russian. Accordingly, on October 27, 2015 the Center sent an email communication to the Parties in English and in Russian concerning the language of proceeding. On the same day, the Complainants sent a request for English to be the language of proceeding in this case, indicating the reasons for it. On October 28, 2015 the Respondent sent three email messages to the Center stating that it understands only Russian and does not understand the Complaint, and requesting that all documents be submitted to it in Russian and that the proceeding in Russian.

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 November 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2015. On November 2, 2015, the Respondent sent an email message to the Center by which it confirmed its previous statements and stated that it was not in a position to prepare a response as it did not understand the Complaint. Apart from this email from the Respondent, no official response was filed with the Center.

The Center appointed Assen Alexiev as the sole panelist in this matter on November 27, 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.

In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In this proceeding, the Center has sent all its messages to the Respondent in both English and Russian and has informed the Respondent that it will accept a response in either English or Russian. The Complainant has submitted its Complaint in the English language and has requested that the proceeding be held in English. The Complainant has also submitted copies of the correspondence exchanged between the Parties prior to the dispute, including a cease and desist letter by the Complainant and an exchange of emails in relation to an unsuccessful attempt to negotiate the transfer of the disputed domain name. This correspondence was exchanged in English and it shows that the Respondent understands and has good command of the English language. On its part, the Respondent has stated that it does not understand English and has requested that the proceeding be held in Russian. In view of the correspondence exchanged between the Parties, which was not disputed by the Respondent, the Panel is not convinced by the Respondent’s statements that it does not understand English and concludes that the Respondent has the ability to communicate in English and to understand and defend itself against the Complaint. The Panel also takes into account that the carrying out of the proceeding in English will avoid unnecessary costs and delay.

In these circumstances, the Panel finds that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account all evidence in the case file, including those in Russian.

4. Factual Background

The Complainants are part of the HUGO BOSS group of companies, which was founded in 1924. This group is among the leading companies in the premium and luxury segment of the apparel market. It focuses on the development and marketing of premium fashion and accessories for men and women and offers a comprehensive product range encompassing classic to modem apparel, elegant eveningwear and sportswear, shoes, leather accessories as well as licensed fragrances, eyewear, watches, children's fashion, home textiles and mobile accessories. Headquartered in Metzingen, Germany, the group has almost 12,500 employees. In 2013, its net sales reached EUR 2.4 billion, making it one of the most profitable listed apparel manufacturers in the world.

The Complainant HUGO BOSS Trademark Management & Co. KG is the owner of the following trademark registrations (the “HUGO BOSS trademark”):

- The Community trademark HUGO BOSS with registration No.000049254, registered on March 26, 2008 for goods and services in International classes 3, 9, 10, 12, 14, 16, 18, 20, 24, 25, 27, 28, 29, 30, 31, 32, 35 and 42;

- The Community trademark HUGO BOSS with registration No. 006645204, registered on November 26, 2012 for goods in International class 16;

- The International trademark Hugo Boss with registration No. 430400 designating more than 40 countries, including the Russian Federation, registered on June 3, 1977 for goods in International Classes 18, 24, 25; and

- The International trademark HUGO BOSS with registration No. 513257 designating more than 35 countries, including the Russian Federation, registered on April 10, 1987 for goods and services in International Classes 9, 14, 16, 18, 25, 28 and 34.

The Complainant HUGO BOSS AG owns and operates the domain names <hugo.com>, <hugoboss.com> and <hugoboss.co.uk>.

The disputed domain name was registered on December 3, 2014.

5. Parties’ Contentions

A. Complainants

The Complainants submit that the disputed domain name is identical to the Complainants’ HUGO BOSS trademark as it wholly incorporates the words “Hugo Boss”. The addition of the “.moscow” new gTLD does not affect the overall impression of the disputed domain name.

According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no legitimate right to the name Hugo Boss, which is the name of the Complainants’ companies. The Complainants have not licensed or otherwise authorized the Respondent to use the HUGO BOSS trademark or to register any domain name incorporating this trademark. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name as the website to which the disputed domain name redirects is a parking page of the Registrar. In view of the Complainants’ HUGO BOSS trademark registrations and their fame, goodwill and notoriety, there is no conceivable legitimate use of the disputed domain name by the Respondent.

The Complainants contend that the disputed domain name was registered and is being used in bad faith. The HUGO BOSS trademark is well-known and the Respondent must have had knowledge of it when it registered the disputed domain name. The city of Moscow is the leading fashion Center of the Russian Federation and the Complainants have multiple stores and agencies based in Moscow. The disputed domain name was registered to create confusion and to mislead the Internet users into believing that the Respondent is affiliated with the Complainants. The Complainant first contacted the Respondent through a cease and desist letter and then tried to amicably obtain the transfer of the disputed domain name, but the attempt was not successful, as the Respondent did not accept the amount offered by the Complainants.

The Complainants request the transfer of the disputed domain name to the Complainant HUGO BOSS AG.

B. Respondent

The Respondent did not submit a response on the substance of the dispute.

6. Discussion and Findings

In order to obtain the transfer of the disputed domain name, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;

(iii) that the disputed domain name has been registered and is being used in bad faith.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

The Respondent did not file a proper response in this proceeding. Under paragraph 14(b) of the Rules, if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

As set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that a respondent’s default does not automatically result in a decision in favor of the complainant. The Panel may draw appropriate inferences from a respondent’s default, but the complainant is nevertheless required to support its assertions with actual evidence in order to succeed in a proceeding under the Policy.

The Panel finds that in this case the failure of the Respondent to file a response on the substance of the dispute permits an inference that the Complainant's reasonable allegations are true and that the Respondent does not deny the contentions of the Complainant.

A. Identical or Confusingly Similar

The Complainants have submitted evidence and have thus established their rights in the HUGO BOSS trademark.

The first part of the disputed domain name is its “hugoboss” element. This element is identical to the HUGO BOSS trademark apart from the omission of the interval between the two words of this trademark, which does not sufficiently distinguish this element of the disputed domain name from the trademark. As to the “.moscow” element of the disputed domain name, the Panel notes the common practice under the Policy to disregard the generic Top-Level Domains (“gTLD”) for the purposes of the comparison under the Policy, paragraph 4(a)(i). Nevertheless, the Panel is of the opinion that even with this element taken into consideration, it still does not preclude a finding of confusing similarity, but rather contributes to the confusion, as Internet users may regard it as signifying the official online location of the Complainants for the city of Moscow.

In these circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to the HUGO BOSS trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

The Policy requires the Complainants to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainants make such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainants to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainants allege that they have not authorized the Respondent to register or use the disputed domain name and that the Respondent is not commonly known by it. The Complainants also contend that the Respondent is not using the disputed domain name, and that in view of the Complainants’ HUGO BOSS trademark registrations and their fame, goodwill and notoriety, there is no conceivable legitimate use of the disputed domain name by the Respondent. Thus, the Complainants have made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has not submitted any evidence or arguments that it has rights or legitimate interests in the disputed domain name and has not denied the contentions of the Complainants despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). As evident from the correspondence exchanged between the Parties prior to this proceeding, the Respondent did not dispute the rights of the Complainants and did not contend that it had rights or legitimate interests in the disputed domain name. If the Respondent had any justification for registering or using the disputed domain names, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in its favor.

The only information available about the Respondent is the WhoIs information, provided by the Registrar. The WhoIs information contains no evidence of rights or legitimate interests of the Respondent in the disputed domain name, which, as found above, is confusingly similar to the well-known HUGO BOSS trademark of the Complainants, registered for many years in the Russian Federation where the Respondent is located.

In these circumstances, and in the absence of any rebuttal by the Respondent of the contentions of the Complainants or allegation to the contrary, the Panel is prepared to accept that the Respondent was aware of the Complainants and of the HUGO BOSS trademark at the time of registration of the disputed domain name, and that this registration was made in view of the popularity of the Complainants and their products. In the Panel’s view, such actions of the Respondent cannot be regarded as giving rise to rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainants’ prima facie showing has not been rebutted, and that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

The Panel finds that the circumstances of the present case support a finding of bad faith of the Respondent. The Complainants have pointed out that Moscow is the leading fashion Center of the Russian Federation, that the Complainants have multiple stores and agencies based in Moscow and that the HUGO BOSS trademark is well-known. The disputed domain name is confusingly similar to the HUGO BOSS trademark, which may mislead Internet users that it represents an official online location of the Complainants for Moscow. In these circumstances, and in the lack of any denial by the Respondent, the Panel is prepared to accept the Complainants’ contention that the Respondent must have sought to register and use the disputed domain name with knowledge of the Complainants and in an attempt to extract undue benefit by causing consumers to mistakenly believe that the disputed domain name is related to the Complainants. This supports a finding of bad faith registration of the disputed domain name.

The Complainants also contend that prior to this proceeding, they contacted the Respondent through a cease and desist letter and offered to it a settlement for the transfer of the disputed domain name against a modest amount of money, but the attempt was not successful, as the Respondent did not agree to the amount offered by the Complainants. This contention is supported by copies of the exchanged correspondence, which is not disputed by the Respondent. It appears from this correspondence that the Respondent did not dispute the Complainants’ contentions of bad faith registration and use of the disputed domain name and agreed to transfer it to the Complainants, but requested a payment for the transfer and was not satisfied by the amount offered to it by the Complainants, without explaining the reasons for its dissatisfaction. In these circumstances, the Panel is prepared to accept that the Respondent has registered the domain name primarily for the purpose of transferring the domain name registration to the Complainants for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

For these reasons, the Panel finds that the Respondent has registered and used the disputed domain name 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 name <hugoboss.moscow> be transferred to the Complainant HUGO BOSS AG.

Assen Alexiev
Sole Panelist
Date: December 17, 2015