HUGO BOSS Trademark Management GmbH & Co., KG and HUGO BOSS AG v. Luigii Cardinaee
Claim Number: FA1705001733894
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 Luigii Cardinaee ("Respondent"), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hugo-boss.us>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2017; the Forum received payment on May 31, 2017.
On June 2, 2017, 1API GmbH confirmed by email to the Forum that the <hugo-boss.us> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 email 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 email 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 David E. Sorkin 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 for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 HUGO BOSS AG.
Founded in 1924, Complainant is a market leader in the premium and luxury segment of the global apparel market, with almost 14,000 employees and net annual sales of EUR 2.7 billion. Complainant uses the HUGO BOSS mark in connection with its products. Complainant owns various European Community and international trademark registrations for the HUGO BOSS mark.
Respondent is the registrant of the disputed domain name <hugo-boss.us>. The domain name resolves to a website entitled "Hugo Boss Outlet | Hugo Boss Store | Hugo Boss Online," containing images copied from Complainant's website, and offering various apparel items for sale. Complainant states that it has not licensed or otherwise authorized Respondent to use its mark, and that Respondent is not known by the disputed domain name.
Complainant contends, on the above grounds, that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that Respondent registered and is using the disputed domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or is being used 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 decisions rendered under the UDRP 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 disputed domain name <hugo-boss.us> corresponds to Complainant's HUGO BOSS mark, substituting a hyphen for the space and adding the ".us" top-level domain. It is thus identical or, at least, confusingly similar to Complainant's mark for purposes of the Policy. See, e.g., Ford Motor Co. & Ford Motor Credit Co. v. Florida Auto Solutions, FA 1212882 (Forum Aug. 8, 2008) (finding <ford-credit.us> confusingly similar to FORD CREDIT); AARC, Inc. v. Doug Petrie, FA 1069923 (ForumOct. 16, 2007) (finding <advance-america.us> identical to ADVANCE AMERICA); Hugo Boss Trade Mark Management GmbH & Co. KG , Hugo Boss AG v. Marco Scheffler, D2005-0842 (WIPO Oct. 14, 2005) (finding <hugo-boss.org> identical or confusingly similar to HUGO BOSS); HUGO BOSS A.G. v. LukcyLukes a.k.a. LUCKYLUKES.COM a.k.a. David Lie, DAS2000-0001 (WIPO Nov. 27, 2000) (finding <hugo-boss.as> confusingly similar to HUGO BOSS). The Panel so finds.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to Complainant's registered mark, and it is being used to impersonate Complainant and sell what presumably are counterfeit goods. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Microsoft Corp. v. John Casiano, FA 1706438 (Jan. 17, 2017); HUGO BOSS Trademark Management GmbH & Co. KG v. Luigii Cardinaee, FA 1566126 (Forum Aug. 4, 2014).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in an attempt to impersonate Complainant and sell what likely are counterfeit goods, is indicative of bad faith under these provisions of the Policy. See, e.g., Microsoft Corp. v. John Casiano, supra; HUGO BOSS Trademark Management GmbH & Co. KG v. Luigii Cardinaee, supra. The Panel finds that the disputed domain name was registered or is being used in bad faith.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hugo-boss.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 28, 2017
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