WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Terry Dong

Case No. DCO2017-0033

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 Terry Dong of Singapore, Singapore, self-represented.

2. The Domain Name and Registrar

The disputed domain name <hugoboss.co> 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 26, 2017. On September 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2017, 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 proceedings commenced on October 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2017.

On October 6, 2017, the Center received emails from the Respondent consenting to the transfer of the disputed domain name. On October 13, 2017, the Complainant filed a suspension request with the Center. The proceeding was accordingly suspended by the Center to enable the Parties to discuss settlement. On November 15, 2017, the Complainant requested the Center to reinstitute the proceeding due to the Respondent’s failure to participate in the settlement process. On November 16, 2017, the Center reinstituted the proceeding and informed the Respondent that the new due date for Response was November 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment.

The Center appointed William P. Knight as the sole panelist in this matter on December 11, 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 members of the Hugo Boss group of companies, one being the registered owner of the worldwide trademarks used by the Group and the other being the ultimate holding company of the group, listed on the Frankfurt Stock Exchange. The Complainants have a shared interest in these proceedings.

The predecessors in title to the Complainants have used the name of their founder HUGO BOSS as a trademark since 1923 and, after a rocky beginning, the post-war group has gone on to establish a worldwide manufacturing and distribution business under the name HUGO BOSS, as well as other trademarks.

The Complainants own or control, amongst numerous other registrations, the following registered trademarks:

- International Trademark Registration No. 1076645 HUGO BOSS, registered on March 15, 2011 in classes 9 and 27 and designating 14 countries

- International Trademark Registration No. 1228292 HUGO BOSS, registered on August 13, 2014 in classes 9, 16 and 21 and designating 10 countries (including China, the Russian Federation and the United States of America)

- International Trademark Registration No. 964782 HUGO BOSS, registered on April 26, 2008 in class 9 and designating 43 countries

- International Trademark Registration No. 482758 HUGO BOSS, registered on February 2, 1984 in classes 3, 9, 14, 18 and 25 and designating 35 countries

- International Trademark Registration No. 513257 HUGO BOSS, registered on April 10, 1987 in classes 9, 14, 18, 25, 28 and 34 and designating 37 countries

- Chinese Trademark Registration No. 949338 HUGO BOSS, registered on February 21, 1997 in class 25

- German Trademark Registration No. 1103572 HUGO BOSS, registered on March 13, 1987 in classes 3, 14, 18, 25, 28 and 34

- German Trademark Registration No. 1056562 HUGO BOSS, registered on November 30, 1983 in classes 3, 9, 14, 18 and 25

- German Trademark Registration No. 1007460 HUGO BOSS, registered on September 8, 1980 in class 25

- United States of America (“United States”) Trademark Registration No. 1,594,225 HUGO BOSS, registered on May 1, 1990 in class 18

- United States Trademark Registration No. 1,515,181 HUGO BOSS, registered on December 6, 1988 in class 9

- United States Trademark Registration No. 1,624,938 HUGO BOSS, registered on November 27, 1990 in class 25.

These registrations and classes are matched in many other countries, significantly in Singapore with registrations T8705009C, T8705008F; T8705007G; T8705006I, each with a priority date of October 13, 1987 and T8700338I (January 24 1987), T1107724A (March 15, 2011), T0814681E (July 10, 2008) and T0808382A (April 26, 2008), all for HUGO BOSS in classes 9, 14, 16, 18, 25, 28 and 34.

The Complainant Hugo Boss AG owns several domains containing the elements “boss”, “hugo” or “hugo boss” and operates numerous websites incorporating the HUGO BOSS marks, for instance <boss.co.uk>, <boss.com>, <hugo.com>, <hugoboss.com> and <hugoboss.co.uk>.

The disputed domain name was registered on August 13, 2012.

The Respondent is domiciled in Singapore. The Respondent has not provided information as to his business interests. He has previously been the subject of a complaint by the Indian telecommunications company Aircel Limited, as a result of his registration of the domain name <aircel.co>, in which it was ordered that that domain name be transferred. Aircel Limited v. Terry Dong, WIPO Case No. DCO2015-0008.

5. Parties’ Contentions

A. Complainant

The Complainants contend:

- that their name and trademark HUGO BOSS is well-known throughout the world;

- that the disputed domain name is identical to the Complainants’ name and trademark in that the only addition to it is the Top-Level Domain (“TLD”) suffix “.co” which cannot and does not distinguish the disputed domain name from the Complainants’ trademark;

- that the Complainants have not licensed or authorized the Respondent to use the Complainants’ name and trademark in any manner, including in a domain name;

- that, given the Complainants’ worldwide reputation and trademark registrations, it is inconceivable that, at any relevant time, the Respondent could have acquired the disputed domain name in circumstances where he was unaware of the renown of the trademark HUGO BOSS;

- at the time of the Complaint, the disputed domain name resolved to a parking page with links to “Hugo Boss Dresses”, “Hugo Boss Accessories”, thus indicating a purpose of attracting, for commercial gain, Internet users to the Respondent’s parking page and thereby other on-line locations, which is evidence of bad faith in accordance with paragraph 4(b)(iv) of the Policy;

- that in a reply to an email from the Complainants’ attorneys the Respondent stated that, having held the disputed domain name for “several years”, he was willing to transfer the disputed domain name to the Complainants for “$1500” (presumably in Singapore currency), which would indicate that the disputed domain name was registered or acquired by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants or to, eventually, a competitor of the Complainants, for valuable consideration in excess of the Respondent´s out-of-pocket costs directly related to the domain name, evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy.

B. Respondent

As already stated, in response to notice of the Complaint both by courier and by email, the Respondent communicated with the Center by email stating that he was prepared to transfer the disputed domain name “hugoboss.com”, by which he presumably intended the disputed domain name, to the Complainants without cost. However, following a suspension of the proceedings to allow this to happen, the Complainants were unsuccessful in securing such transfer from the Respondent. The Respondent did not otherwise reply to the Complainants’ contentions.

6. Discussion and Findings

To succeed in these proceedings, the Complainants must prove each of the following (Policy, paragraph 4(a)):

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

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

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

A. Identical or Confusingly Similar

The Complainants have shown that they own or control numerous registrations of the trademark HUGO BOSS in many countries.

The disputed domain name is identical to the Complainants’ HUGO BOSS trademark.

The Panel thus finds that the disputed domain name is identical or confusingly similar to the Complainants’ trademark HUGO BOSS.

B. Rights or Legitimate Interests

Further to the unrebutted prima facie case made out by the Complainants, the Panel considers that the Respondent has no rights or legitimate interests in any of the disputed domain name, any more than he had in the case of the trademark of the Indian telecommunications company Aircel Limited. Aircel Limited v Terry Dong, id. There are no circumstances here that would appear to give rise to any rights or legitimate interests in the disputed domain name on the part of the Respondent pursuant to paragraph 4(c) of the Policy or otherwise.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The well-known trademark HUGO BOSS is so obviously connected with the Complainant that by definition the registration of the disputed domain name was made in opportunistic bad faith, the use of the disputed domain name to resolve to a parking page, and subsequent attempt by the Respondent to sell the disputed domain name to the Complainants lends weight to a finding of bad faith in the sense of the examples given by the Policy, paragraphs 4(b)(i) and 4(b)(iv).

The Panel, therefore, finds that the Respondent 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.co> be transferred to the second Complainant, Hugo Boss AG.

William P. Knight
Sole Panelist
Date: December 13, 2017