WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Cade Hertmen
Case No. D2016-2414
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 Cade Hertmen of Dayton, Virginia, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bosssuitukstore.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2016. On November 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2016, 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 registered in the Respondent’s name on January 15, 2016;
(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 December 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 4, 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 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.
As noted above, the disputed domain name was registered on January 15, 2016.
It does not appear to have resolved to an active website. Instead, it resolves to a webpage which states “Sorry!” and that the IP address may have changed, or there has been a server misconfiguration or the site may have moved to a different server.
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. The courier attempting to serve the Written Notice reported “The address on the airway bill is incomplete/wrong.” That is despite the Registrar’s confirmation that it is the “correct” address. 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, the Complainants’ 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 First Complainant has proven ownership of at least the 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. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.com” gTLD, the disputed domain name consists of the First Complainant’s trademark and the words “suit”, “UK” and “store”. “Suit” and “store” are plainly descriptive of the products and services for which the Complainants’ group is very well-known. The element “UK” is likely to convey a geographical representation for the United Kingdom of Great Britain and Northern Ireland (“UK”). It is likely therefore that many Internet users would perceive the disputed domain name as the First Complainant’s trademark coupled with a descriptor indicating that an associated website is, or is associated with, the Complainants’ group online presence for the UK.
Accordingly, the Panel finds that the Complainants have established that the disputed domain name is confusingly similar to the First Complainant’s trademark 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 a 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. 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 the Complainants’ corporate group. The Complainants further state that the Respondent does not own any registered trademarks or company names for, or based on, “Boss”. The disputed domain name is plainly not derived from the Respondent's name.
As noted above, the disputed domain name does not resolve to a website which is offering any goods or services for sale. So far as can be ascertained, it does not appear to be in use at all, whether commercially or noncommercially.
Bearing in mind the length and extent of use of the First Complainant’s trademark, these factors are typically sufficient to establish a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name.
The Respondent has not attempted to rebut that case. In particular, the Respondent has not sought to claim any preparations to use the disputed domain name in connection with anything, let alone something which might be characterized as a good faith offering of goods or services under 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. 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 Complainant 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.
Given the length and extent of use of the First Complainant’s trademark, the Panel accepts that it is very well-known around the world and, in particular, is very well-known in respect of the Complainants group’s suits and related fashion accessories. The Panel accepts that is particularly the case in the United States, where the Respondent has given his or her address, and in the UK which is denoted in the disputed domain name.
As a result and in the absence of any attempted justification or explanation from the Respondent, the Panel infers that the Respondent well knew of the First Complainant’s trademark when he or she registered the disputed domain name and well knew the disputed domain name was very likely to convey to Internet users a representation of association with the Complainants group’s products.
In these circumstances, therefore, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith in line with the principles established in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. As in that decision, the Panel is reinforced in that conclusion by the inaccessibility of what purports to be a fax number provided by the Respondent and inability of the courier to effect delivery of the Written Notice to the address recorded in the WhoIs details.
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 <bosssuitukstore.com> be transferred to the Complainant Hugo Boss AG.
Warwick A. Rothnie
Date: January 10, 2017