HUGO BOSS Trademark Management GmbH & Co. KG v. Luigii Cardinaee
Claim Number: FA1406001566126
Complainant is HUGO BOSS Trademark Management GmbH & Co. KG (“Complainant”), represented by Alberto Camusso of Studio Legale Jacobacci & Associati, Italian Republic. Respondent is Luigii Cardinaee (“Respondent”), Italian Republic.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hugobossclothing.us> and <hugobossoutlet.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2014; the National Arbitration Forum received payment on June 24, 2014.
On June 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hugobossclothing.us> and <hugobossoutlet.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hugobossclothing.us, postmaster@hugobossoutlet.us. Also on June 25, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant, HUGO BOSS Trademark Management GmbH, has been using the HUGE BOSS mark in commerce since 1990 in connection with the sale of leather goods.
ii. Complainant has a valid trademark registration with the United States Patent and Trademark Office (“USPTO”) for the HUGO BOSS mark (Reg. No. 1,624,938, registered Nov. 27, 1990).
iii. The domain names <hugobossclothing.us> and <hugobossoutlet.us> are confusingly similar to the trademark in which Complainant has rights.
i. Respondent is not commonly known by the disputed domain names.
ii. Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s products.
i. Respondent had actual or constructive knowledge of Complainant’s rights in the mark.
ii. Respondent is intentionally attracting Internet users to Respondent’s site for commercial gain by creating a likelihood of confusion with Complainant’s trademark.
iii. Respondent’s disputed domain names resolve to a website that used the HUGO BOSS logo to convey the misleading impression that Respondent is associated with Complainant’s organization.
Respondent registered both of the disputed domain names <hugobossclothing.us> and <hugobossoutlet.us> on December 15, 2013.
1. Respondent’s <hugobossclothing.us> and <hughbossoutlet.us> domain names are confusingly similar to Complainant’s HUGO BOSS mark.
2. Respondent does not have any rights or legitimate interests in the <hugobossclothing.us> and <hughbossoutlet.us> domain names.
3. Respondent registered or used the <hugobossclothing.us> and <hughbossoutlet.us> domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant argues that it has been using the HUGE BOSS mark in commerce since 1990 in connection with the sale of leather goods. Complainant alleges that it has a valid trademark registration with the USPTO for the HUGO BOSS mark (Reg. No. 1624938, registered Nov. 27, 1990). See Complaint Annex 3. The Panel notes that Respondent resides in Italy, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register the mark in the country that Respondent operates in. See ; KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that the domain names <hugobossclothing.us> and <hugobossoutlet.us> are confusingly similar to the trademark in which Complainant has rights. The Panel notes that the domain names encompass Complainant’s mark with the addition of the descriptive words “clothing” and “outlet”. The Panel finds that the addition of these descriptive words to Complainant’s mark does not defeat a finding of confusingly similar under Policy ¶ 4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The Panel observes that the disputed domain names also encompass Complainant’s mark with the addition of the county code top-level domain (“ccTLD”) “.us”. The Panel holds that the addition of a ccTLD to Complainant’s mark does not defeat the finding of confusingly similar under Policy ¶ 4(a)(i). See Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel concludes that the domain names <hugobossclothing.us> and <hugobossoutlet.us> are confusingly similar to the HUGO BOSS mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes there is absolutely no evidence that Respondent has ever held a trademark identical to the <hugobossclothing.us> and <hugobossoutlet.us> domain names. Therefore, the Panel agrees there is no basis for a finding under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant argues that Respondent is not commonly known by the disputed domain names. The Panel notes that the registrant of the disputed domain names is listed as “Luigii Cardinaee”. In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), the panel found that the respondent had registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’, and that given the WHOIS domain name registration information, that the respondent was not commonly known by the [<awvacations.com>] domain name. At present, the circumstances are comparable because the only evidence available to the Panel is the name listed in the WHOIS information due to Respondent’s default. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain names <hugobossclothing.us> and <hugobossoutlet.us> under ¶ 4(c)(iii).
Complainant urges that Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s products. The Panel sees that Respondent’s disputed domain names resolve to a webpage that offers for sale items that appear to be identical or similar to products sold by Complainant but are in fact counterfeit items. See Compl., Annexes 9–10. The Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under ¶ 4(c)(iv) as the disputed domain names sell counterfeit items that appear to be identical to products sold by Complainant. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Complainant contends that Respondent is intentionally attracting Internet users to Respondent’s site for commercial gain by creating a likelihood of confusion with Complainant’s trademark. The Panel recalls that the disputed domain names <hugobossclothing.us> and <hugobossoutlet.us> resolve to web pages that offer for sale items that appear identical to those sold by Complainant, but are in fact counterfeit products. See Compl., at Attached Annexes 9–10. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent is likely to profit from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant states that Respondent’s disputed domain names resolve to a website that used the HUGO BOSS logo to convey the misleading impression that Respondent is associated with Complainant’s organization. The Panel recalls that Respondent’s disputed domain names resolve to web pages that contain Complainant’s trademark and offer for sale products that appear to be identical to products that Complainant sells. The Panel agrees that Respondent is attempting to pass the disputed domain names off as being affiliated with or being identical to Complainant, and the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the mark. Complainant contends that in light of the fame and notoriety of Complainant's HUGO BOSS mark, it is inconceivable that Respondent could have registered the <hugobossclothing.us> and <hugobossoutlet.us> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hugobossclothing.us> and <hugobossoutlet.us> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 4, 2014
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