WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss Ag v. Yang Kemin

Case No. D2015-0970

1. The Parties

The Complainant is Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss Ag (individually or collectively, the "Complainant") of Metzingen, Germany, represented by Dennemeyer & Associates S.A., Germany.

The Respondent is Yang Kemin of Beijing, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <boss.我爱你> (<boss.xn--6qq986b3xl>) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 8, 2015. On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 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 18, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 22, 2015, the Complainant confirmed its request that English be the language of the proceeding. On June 22, 2015, the Respondent sent an email to the Center requesting Chinese be the language of the proceeding.

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 June 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2015. The Response was filed with the Center on July 9, 2015. On the same day, the Center sent an email to the Respondent, asking it to confirm the filed Response as its complete version. The Respondent did not make any such confirmation. Therefore, the Center acknowledged receipt of the Response on July 16, 2015.

The Center appointed Jonathan Agmon as the sole panelist in this matter on July 23, 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.

On August 18, 2015 the Panel issued Administrative Panel Procedural Order No. 1 ("Order No. 1") requesting:

(1) the Complainant to comment on the use of the web site at the disputed domain name as illustrated in the Response; and

(2) the Respondent to further comment on his selection of the disputed domain name, specifically providing evidence regarding the company at which he works and his boss.

On August 21, 2015, the Complainant filed a request to suspend the proceedings so as to allow the parties to try and settle the dispute.

On August 23, 2015 the Respondent provides its response to Order No. 1. On the following day, the Responded agreed to the suspension request filed by the Complainant.

On August 25, 2015, the Panel issued a Suspension Order suspending the proceedings until September 23, 2015.

On September 22, 2015, the Complainant requested a re-institution of the proceedings.

On September 24, 2015, the Complainant filed its response to Order No. 1.

On September 28, 2015, the Panel ordered re-institution of the proceedings.

4. Factual Background

The Complainant is one of the market leaders in the premium and luxury segment of the global apparel market. The Complainant was founded in 1924, it has more than 12,500 employees and its net sales was EUR 2.4 billion in 2013.

The Complainant is the owner of numerous trademark registrations for the HUGO BOSS mark around the world. For example: Chinese Trademark No. 253,481 of June 30, 1986; European Union Trademark No. 49,254 of March 26, 2008; United Kingdom of Great Britain and Northern Ireland ("United Kingdom") Trademark No. 1,276,175 of August 26, 1986; United States Trademark No. 1,499,728 of August 9, 1988 and many more.

The Complainant is the owner of numerous trademark registrations for the BOSS mark around the world. For example: European Union Trademark No. 1,798,099 of September 24, 2001; European Union Trademark No. 2,342,038 of June 8, 2006; United States Trademark No. 1,023,305 of October 21, 1975 and many more.

Through extensive use around the world, the HUGO BOSS and BOSS trademarks have generated vast good will and have become well-known in connection with clothes, jewelry, watches, leather goods, perfumes and more.

The Complainant has also developed a presence on the Internet and is the owner of several domain names which contain the name "Hugo Boss". For example: <hugoboss.com>, <boss.co.uk> and <hugoboss.uk>.

The disputed domain name <boss.我爱你> was registered on April 8, 2015.

The disputed domain name resolves to a website showing the text: "boss i love u" in both Chinese and English.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant's HUGO BOSS and BOSS trademarks. The Complainant further contends that the addition of the generic Top-Level Domain ("gTLD") "我爱你" ("I love you") does not avoid a finding of confusing similarity.

The Complainant further argues that the HUGO BOSS and BOSS trademarks have generated vast good will through the Complainant's extensive use around the world and has become well-known trademarks.

The Complainant further argues that the public associates the marks HUGO BOSS and BOSS exclusively with the high quality goods of the Complainant.

The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its HUGO BOSS and/or BOSS trademarks and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant argues that the disputed domain name was improperly registered and is being improperly used in bad faith. The Complainant argues the disputed domain name was clearly registered in order to prevent the Complaint from reflecting the mark in a corresponding domain name.

The Complainant further argues that that the disputed domain name does not lead to any active web site.

The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant's famous and well-known trademark when registering the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent claims that he is holding the disputed domain name privately.

The Respondent claims that he paid for the disputed domain name and that he does not receive income from it. The Respondent further claims he obtained the disputed domain name for the inauguration of his company as a gift for his most beloved boss, as an electronic gift, which will have the blessing of the staff of his group.

The Respondent argues that this is not a case of "malicious cybersquatting" and that he refused to trade it.

The Respondent further argues "boss" is a word with a certain meaning and this is way he registered that disputed domain name and not because of the Complainant, which he is familiar with.

From the Respondent's point of view, the only meaning of the disputed domain name <boss.我爱你> is literally "boss I love you".

In view of the above the Respondent asks to keep the disputed domain name.

C. Additional Submissions

In response to Order No. 1 the Respondent reiterated that the disputed domain name was registered by "employees of a company".

The Respondent further provided that the name of the company could not be disclosed because of some confidentiality agreement.

The Respondent described the company to be founded in 1984, and engaged in various metals, import and export, trade, logistics, high tech research and development, food production, agricultural production and trade, and the media industry.

The Respondent provided that the company is very large, having thousands of employees in China and around the world.

The Respondent further provided it works in the Chief Operations Officer's office of this company.

In response to Order No. 1 the Complainant provided that the screen shot attached to the Complaint showing that there was no use under the disputed domain name, was made on June 8, 2015 (the date when the Complaint was filed).

The Complainant further provided that the proliferation of new gTLDs has been myriad with infringing domain name registrations carrying the Complainant's trademarks.

The Complainant further stated that the upload of content on the web site under the disputed domain name after the Complaint was filed was insufficient to show that such use would not turn into an infringing use.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceeding

Paragraph 11(a) of the Rules provide that: "Unless otherwise agreed by the Parties, or specified otherwise 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".

The Complainant stated that the language of the Registration Agreement is unknown. the Registrar confirmed that the Registration Agreement is in Chinese. The Complainant further stated that it supposes the disputed domain name will be used "on an international level where English is the common language". This however is not supported by evidence. Also, unsupported by evidence was the assertion that the Respondent is able to understand English.

In Annex 2 of the Complaint, the Complainant requested that the language of the proceedings be English. The Complainant cited the fact that the disputed domain name is comprised of English characters and the cost of translation of the Complaint is high. The Complainant did not provide a translation of the Complaint or the other materials filed in English.

In the Notification of Complaint, the Center indicated that it accepted the Complaint in English, that it would accept a Reponsen in either English or Chinese, and appoint a Panel familiar with both language, if available. The Respondent submitted the Response in Chinese. As the proceedings unfolded, it was obvious to the Panel that the Respondent could read and understand English and the arguments made by the Complainant.

Moreover, the disputed domain name is indeed comprised of an English and not a Chinese word – "boss". This despite the fact that the Respondent claimed the use of the disputed domain name was for his Chinese employer. Moreover, after the proceedings commenced, the Respondent uploaded content in both English and Chinese to the web site under the disputed domain name.

Taking regard of the circumstances of this case, including, but not limited to the fact that the disputed domain name is in the English language, that the content on the web site under the disputed domain name is also in the English language and particularly the Respondent's ability to respond in Chinese to the submissions made in English by the Complainant, the Panel finds that the Respondent will not be prejudiced if the decision is rendered in the English language.

The Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of numerous trademarks registrations for the HUGO BOSS and BOSS marks around the world. For example: Chinese Trademark No. 253,481 for HUGO BOSS of June 30, 1986; European Union Trademark No. 49,254 for HUGO BOSS of March 26, 2008; United Kingdom Trademark No. 1,276,175 for HUGO BOSS of August 26, 1986; United States Trademark No. 1,499,728 for HUGO BOSS of August 9, 1988; European Union Trademark No. 1,798,099 for BOSS of September 24, 2001; European Union Trademark No. 2,342,038 for BOSS of June 8, 2006; United States Trademark No. 1,023,305 for BOSS of October 21, 1975 and many more.

Also, the Complainant's rights in the HUGO BOSS and BOSS marks have been established in numerous UDRP decisions (see e.g., Hugo Boss v. Loung Dinh Dung, WIPO Case No. D2011-0564 and Hugo Boss AG v. Guan Jing, Lin Jing, li xiaoyong, WIPO Case No. D2012-1690 and many more).

The disputed domain name differs from the registered BOSS trademark by the addition of the gTLD "我爱你" which means in Chinese "I love you".

The disputed domain name integrates the Complainant's BOSS trademark in its entirety, as a dominant element.

The addition of the gTLD "我爱你" to the disputed domain name does not avoid confusing similarity (see, e.g., F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The gTLD "我爱你" is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the BOSS trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below under Section D.

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the disputed domain name, by demonstrating any of the following:

"(i) before any notice to [it] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that [the respondent] ha[s] been commonly known by the domain name, even if [it] ha[s] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The disputed domain name is a phrase comprised of dictionary word "boss". The Respondent's use of the disputed domain name for a website with content relevant to its generic or descriptive sense can represent a legitimate interest, so long as there is no persuasive evidence that the disputed domain name was actually selected for its trademark rather than generic or descriptive value. See WIPO Overview 2.0, paragraph 2.2.

As discussed further below in connection with the bad faith element of the Complaint, the Panel is not persuaded from the record before it that the Respondent chose the disputed domain name for its generic or descriptive sense.

The Respondent failed to provide evidence to the contrary, although the Complainant provided sufficient evidence that a prima facie finding can be made to show that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent failed to show that it has a right or legitimate interest in the disputed domain name. There was no evidence supporting that before a notice of the dispute the Respondent was using the disputed domain name in connection with bona fide offering of goods or services. As is indicated below in Section D, the Respondent failed to disclose (even in confidence) to the Panel even the minimum information requested with respect to the identity of the so called company the so called "boss" was working for, which, on balance, persuades the Panel that the Respondent's explanations are self-serving statements and that the website is a "sham" site. At the time the Complaint was filed, the Complainant's proved that the Respondent was not making legitimate noncommercial or fair use of the disputed domain name.

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant uses the BOSS trademark for many years and owns registration of the BOSS trademark since 2005. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant provided sufficient evidence to demonstrate its trademark's goodwill. The Panel consider that it is very unlikely that the Respondent registered the disputed domain name without knowledge either of the existence of the trademark BOSS or that the dispute domain name might be of some type of economic advantage. It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name. The Respondent is in fact admits to this knowledge in its Response.

The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have ruled that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Policy's non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following cited by the Complainant:

"(iv) 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 Respondent claimed that he registered the disputed domain name, without the intent to profit from it, for the inauguration of the company he works for. The Respondent stated that the registration was done in respect of his "most beloved boss".

In view of the scarcity of evidence provided by both Parties in this case, the Panel issued Order No. 1. In response to the Panel's Order No. 1, the Complainant provided details that show that the Respondent uploaded to the web site under the disputed domain name content comprising a single web page in both the English and Chinese language after the Complaint was filed.

While specifically requested by the Panel, the Respondent failed to provide any kind of evidence supporting his contentions. The Respondent stated that he was under a confidentiality obligation, and therefore could not provide the information and evidence required by the Panel, but failed to provide any evidence of such purported confidentiality proviso or agreement. Such failure is viewed by the Panel as clear evidence of bad faith registration and use of the disputed domain name.

The Respondent provided a description of the company he works for to be a very large company employing thousands of workers worldwide, but failed to specifically identify it, or provide any kind of evidence from his so called boss that the disputed domain name was indeed registered and used in his honor. If anything, the Respondent seemed to use what this Panel can only describe as a sham web site to try and support a claim of bona fide registration and use. This Panel is of the opinion, that the use of sham web site would indicate bad faith on the part of the Respondent.

The web site under the disputed domain name (subsequent to the filing of the Complaint) has a single page showing the words "boss, I love you" in both Chinese and English. Without further support, although so requested by the Panel and not provided, this Panel finds that the web site is a sham and intended to manufacture "use" to comply with a defense afforded by the Policy to the respondents. This Panel takes seriously the Respondent contentions, but has provided equal weight to the fact that the Respondent failed to comply with Order No. 1. Such failure can only, therefore, be construed against the Respondent.

The Panel finds that the use of what can only be described as a sham web site would no doubt create confusion with the Complaint's mark. It is important to note that such confusion is created even before Internet users reach the web site under the disputed domain name. The confusion is already created when the disputed domain name is searched. Moreover, even when Internet users reach the web site under the disputed domain name, the association they would likely form would be with the Complaint's trademark.

In the present case, the Respondent does not deny his awareness of the Complainant's web site and trademarks, but claims that he chose the disputed domain name for its undeniable generic or descriptive value, and made relevant use of it from the outset. During these proceedings, these contentions were shown to the Panel to be false. The Respondent only began use of the disputed domain name after the filing of the Complaint. Moreover, as noted above, such use is devoid of any substance, could not be supported and seems to be sham at best.

In the Panel's view, it is inconceivable that the disputed domain name was chosen by the Respondent for any generic or descriptive value. Even if it was, the sham use and failure to respond with clarity, honesty and with supporting documents to the Panel's Order No. 1 shows clearly that the selection of the disputed domain name and the use made under the disputed domain name is nothing but to prevent the Complainant from reflecting its trademark under the gTLD "我爱你" and to create a likelihood of confusion with the Complainant's mark.

Based on the evidence presented to the Panel, including the trademarks owned by the Complainant, the relatively late registration of the disputed domain name, the use of the Complainant's trademark under the disputed domain name, failure of the Respondent to provide credible evidence to support his claims, and the similarity between the disputed domain name and the Complainant's mark, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <boss.我爱你> be transferred to the Complainant, namely Hugo Boss Ag.

Jonathan Agmon
Sole Panelist
Date: October 10, 2015