Westmore · UDRP DecisionShophugobossoutletstore.com
The Panel ordered transfer of <shophugobossoutletstore.com> to Hugo Boss AG. It found that the domain incorporated the HUGO BOSS mark in its entirety and that the descriptive terms “shop,” “outlet,” and “store” did not avoid confusing similarity. The Respondent lacked rights or legitimate interests because the unauthorized commercial website imitated the Complainants’ official site, prominently used their mark, and did not disclose the absence of any relationship with them. Registration and use in bad faith were established by the Respondent’s evident awareness of the well-known mark and its intentional use of confusion to attract Internet users for commercial gain.
The timeline behind shophugobossoutletstore.com
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This decision illustrates how a domain combining a well-known trademark with retail terms can strengthen rather than dispel the impression of an official commercial outlet. It also shows the importance of website content under the second and third UDRP elements: copying official presentation, prominently using the mark, and omitting an affiliation disclaimer defeated any potential reseller justification and supported intentional commercial confusion.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hugo Boss Trade Mark Management GmbH & Co. KG, Hugo Boss AG v. cheng yong Case No. D2015-1688 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 cheng yong of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar The disputed domain name <shophugobossoutletstore.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2015. On September 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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. 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 proceeding commenced on September 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2015. The Center appointed Theda König Horowicz as the sole panelist in this matter on October 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. 4. Factual Background The Complainants belong to the same corporate group known as HUGO BOSS which was founded in 1924 and which is one of the leading companies in the premium and luxury segment of the apparel market. The HUGO BOSS Group is based in Germany; its products are sold worldwide in retail locations, shop-in-shops and factory outlets, including in China. The Complainant Hugo Boss Trade Mark Management GmbH & Co. KG owns a number of registrations for the trademark HUGO BOSS all around the world in many classes notably in classes 3, 9, 14, 18 and 25, for example: - German Trademark Registration No. 1007460, in international class 25, of September 8, 1980 - German Trademark Registration No. 1103572, in international classes 9, 14, 18, 25, 28 and 34, of March 13, 1987 - German Trademark Registration No. 302010038813, in international classes 9, 27 and 35, of October 13, 2010 - Chinese Trademark Registration No. 253481, in international class 25, of June 30, 1986 - International Trademark Registration No. 637658, with extension in China, in international classes 29-33, of May 31, 1995 - International Trademark Registration No. 765707, with extension in China, in international classes 35, 38 and 41, of June 1, 2001. The Complainant Hugo Boss AG owns and operates websites under different domain names incorporating the trademark HUGO BOSS, for instance <hugoboss.com>, on which it is possible to buy Hugo Boss products on-line. The Respondent registered the disputed domain name <shophugobossoutletstore.com> on June 30, 2015. The disputed domain name is linked to a website reproducing the same layout as the official Hugo Boss website and selling products bearing the HUGO BOSS trademark at a discounted price. 5. Parties’ Contentions A. Complainants The Complainants indicate being the owner of several registrations worldwide for the well-known HUGO BOSS trademark. The disputed domain name <shophugobossoutletstore.com> is identical and/or confusingly similar to the Complainants’ trademark as it wholly incorporates HUGO BOSS. The terms “shop”, “outlet” and “store” are descriptive and therefore do not influence the comparison of the conflicting signs. The Complainants mention that the Respondent has no rights or legitimate interests in the name “Hugo Boss”. The Complainants have not licensed or otherwise authorized the Respondent to use their trademarks or to apply for any domain name incorporating their trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since the website to which it resolves clearly shows online selling activities that are not authorized by the Complainants. The Complainants are the exclusive holders of the trademark HUGO BOSS and the Respondent’s name does not coincide with the mark. There are no imaginable circumstances under which the Respondent could legitimately use the disputed domain name considering the number of HUGO BOSS trademarks and domain names and the fame, goodwill and notoriety of the Complainants. The Complainants allege that HUGO BOSS is well-known and that the Respondent must have had knowledge of the Complainant’s rights when it registered the disputed domain name. There is no bona fide offering of goods and services on the website which <shophugobossoutletstore.com> leads to as the selling of clothing articles and accessories under HUGO BOSS was not allowed by the Complainants. The Respondent imitated the design of the Complainants’ website thus wrongly giving the impression to the consumer that the Respondent’s website is genuine and managed by the Complainants, which is clearly use in bad faith. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name: (i) that the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainants have demonstrated trademark rights in HUGO BOSS, including in China where the Respondent is based. The trademark HUGO BOSS is reproduced in its entirety in the disputed domain name <shophugobossoutletstore.com>. In cases where generic and descriptive terms are added to a trademark in a domain name, previous UDRP panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name ( Hoffmann-La Roche Inc. v. Wei-Chun Hsia , WIPO Case No. D2008-0923 ). In the present case, the addition of the descriptive terms “shop”, “outlet” and “store” have obviously no influence on the comparison of the conflicting signs, particularly since HUGO BOSS in a well-known trademark. Under the circumstances, the Panel concludes that the disputed domain name is identical and/or confusingly similar to the Complainants’ mark. The condition required under paragraph 4(a)(i) of the Policy is thus fulfilled. B. Rights or Legitimate Interests Under the Policy, the Complainants must show at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of production on this issue then shifts to the Respondent. In the present case, the Respondent pointed the disputed domain name <shophugobossoutletstore.com> to a website having the same layout as the official website of the Complainants. The website prominently uses the trademark HUGO BOSS. It also reproduces the same branding, in particular the same black and white colors. Furthermore, the website is a platform on which apparel (clothes, shoes, watches, etc .) under and/or bearing the HUGO BOSS trademark is sold at a discounted price. The Complainants have evidenced the well-known character of their brand. They have also explained that the Respondent is not an official retailer of their goods and that they never authorized the Respondent to use their trademark in the disputed domain name and/or to use their HUGO BOSS trademark in its business. In particular, the Complainants have not granted any license or authorization to the Respondent to use their mark in any manner, nor is there an affiliation between the Complainants and the Respondent to justify the use of the Complainants’ mark by the Respondent. According to the Oki Data principles ( Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 ), a bona fide offering of goods by a reseller must meet certain requirements, notably: - actual offering of goods and services at issue; - use of the site to sell only the trademarked goods; - accurate and prominent disclosure of the registrant’s relationship with the trademark holder. In this context, the Panel notes that the Respondent’s website does not disclose the fact that it has no relationship whatsoever with the Complainants. To the contrary, the website linked to the disputed domain name gives the impression of being an official HUGO BOSS website. It uses the terms “Hugo Boss Outlet”, and offers a “Hugo Boss affiliate program”, without ever mentioning the fact that it is not an official point of sale. Furthermore, the Respondent copied the Complainants’ website without authorization and prominently uses the HUGO BOSS trademark in a similar way and manner to how the trademark is used by the Complainants, therefore creating a great risk of confusion for consumer as to the legitimacy and origin of the website. As a matter of fact, the presentation of the website is likely to mislead Internet users into believing the site is operated or endorsed by the Complainants ( Philip Morris Incorporated v. Alex Tsypkin , WIPO Case No. D2002-0946 and Daimler AG v. William Wood , WIPO Case No. D2008-1712 ). In addition, the Center could not transmit its notice communications to the Respondent, which came back with the bounce-back messages that the Respondent could not be found at the indicated address. This fact raises the question as to whether the Respondent really exists and operates a legitimate business. Finally, the Respondent has not disputed the facts as presented by the Complainant and there is no evidence before the Panel to suggest that the Respondent either is commonly known by the disputed domain name or is operating a legitimate business or any other organization under the disputed domain name. For these reasons, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which the Respondent has not rebutted. The second condition of paragraph 4(a) of the Policy is therefore fulfilled. C. Registered and Used in Bad Faith The Complainants have been shown to own the HUGO BOSS trademark for decades and that this trademark has acquired a well-known status over the years. It is therefore very unlikely that the Respondent could have been unaware of the trademark HUGO BOSS and of the Complainants’ website “www.hugoboss.com” when registering the disputed domain name in June 2015 ( Heineken Brouwerijen B.V. v. Mark Lott , WIPO Case No. D2000-1487 ; The Gap, Inc. v. Deng Youqian , WIPO Case No. D2009-0113 ). The mere fact that the Respondent created a website reproducing - without authorization - the layout of the Complainants’ official website and that the Respondent sells goods on the said website under the HUGO BOSS trademark constitutes sufficient evidence to demonstrate that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the website operated under the disputed domain name, by creating a likelihood of confusion with the Complainants’ mark. The third condition of paragraph 4(a) the Policy is thus established. 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 <shophugobossoutletstore.com> be transferred to the Complainant HUGO BOSS AG. Theda König Horowicz Sole Panelist Date: November 13, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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