HUGO BOSS Trademark Management GmbH & Co., KG and HUGO BOSS AG v. Dan Thurston
Claim Number: FA1706001734085
Complainant is HUGO BOSS Trademark Management GmbH & Co., KG and HUGO BOSS AG (“Complainant”), represented by Roxana A. Sullivan of Dennemeyer & Associates, LLC, Illinois, USA. Respondent is Dan Thurston (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hugobossonline.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2017; the Forum received payment on June 1, 2017.
On June 1, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hugobossonline.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2017 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 email@example.com. Also on June 5, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 usTLD Policy, usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <hugobossonline.us> domain name is confusingly similar to Complainant’s HUGO BOSS mark.
2. Respondent does not have any rights or legitimate interests in the <hugobossonline.us> domain name.
3. Respondent registered and uses the <hugobossonline.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hugo Boss AG, is a global retailer of apparel. Complainant holds a registration for its HGO BOSS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,499,728, registered Aug. 9, 1988).
Respondent registered the <hugobossonline.us> domain name in on April 30, 2015, and uses it to appropriate images of clothing and models from Complainant’s own website.
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(f), 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 (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.”).
The Panel finds that Complainant has rights in the HUGO BOSS mark under Policy ¶ 4(a)(i) based upon its registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <hugobossonline.us> domain name includes the entire HUGO BOSS mark in combination with the generic term “online”. Respondent also adds the ccTLD “.us.” The omission of spacing in a mark and the addition of a ccTLD are insufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Similarly, the inclusion of the generic term “online” in the disputed domain name does not mitigate the confusing similarity between <hugobossonline.us> and Complainant’s HUGO BOSS Mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that Respondent’s <hugobossonline.us> domain name is confusingly similar to Complainant’s HUGO BOSS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in <hugobossonline.us> and is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the HUGO BOSS mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) The WHOIS information of record identifies Respondent as “Dan Thurston.” Thus, the Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). There is also nothing in the record to indicate that Respondent has any trademark rights in the disputed domain name under Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent’s use of the website does not constitute a bona fide offering of goods or services, or a legitimate noncommercial fair use. Complainant contends that Respondent uses the disputed domain name to pass itself off as Complainant, by copying the graphics and layout of Complainant’s own site and purporting to sell Complainant’s products. Generating confusion among Internet users by attempting to create an affiliation between a non-licensed respondent and a complainant’s business is neither a bona fide offer nor a legitimate noncommercial use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Therefore, the Panel finds that Respondent has no rights under Policy ¶¶ 4(c)(ii) and (iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent uses the disputed domain name to attract Internet users in order to personally profit from the revenue it generates by posing as Complainant. Complainant asserts that Respondent has created a resolving site so similar to Complainants own that it is likely to generate confusion among internet users, who may inadvertently purchase products from Respondent when they intended to purchase products from Complainant. Capitalizing on the goodwill and notoriety of widely known marks in this way can provide evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Therefore, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent must have had actual knowledge of Complainant’s HUGO BOSS mark and business because Respondent registered the disputed domain name using an added generic term coupled with Complainant’s HUGO BOSS mark, which is famous and familiar to countless consumers. The Panel agrees, noting Respondent’s use of Complainant’s own materials at its website, and finds bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hugobossonline.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 29, 2017
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