HUGO BOSS Trademark Management GmbH & Co., KG; and HUGO BOSS AG v. lupe haag / Lupe Haag
Claim Number: FA1801001768931
Complainant is HUGO BOSS Trademark Management GmbH & Co., KG; and HUGO BOSS AG (“Complainant”), represented by Douglas M Isenberg of The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC, Georgia, USA. Respondent is lupe haag / Lupe Haag (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bosssale.us>, registered with 1API GmbH.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2018; the Forum received payment on January 25, 2018.
On January 30, 2018, 1API GmbH confirmed by e-mail to the Forum that the <bosssale.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 February 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2018 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 February 2, 2018, 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 February 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 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.
Complainant is a global apparel market focusing on developing, market, and licensing premium fashion and accessories for men’s and women’s apparel and related goods. Complainant has rights in the BOSS mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,594,226; registered May 1, 1990). See Compl. Annex 1. Respondent’s <bosssale.us> domain name is identical to Complainant’s BOSS mark as Respondent merely adds the generic term “sale” and the “.us” country code top level domain (“ccTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <bosssale.us> domain name as Respondent is not authorized nor has acquired the rights to use the BOSS mark and Respondent is not commonly known by the disputed domain name. Respondent also is not the owner or beneficiary of a trade or service mark that is identical to the domain name. Additionally, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as Respondent is not an authorized reseller of Complainant’s goods, and offers to sell what appear to be counterfeit goods. See Compl. Annex 6.
Respondent registered and uses the <bosssale.us> domain name in bad faith. Respondent disrupts Complainant’s business and redirects users to the domain name where it sells counterfeit and unauthorized goods. Additionally, Respondent had constructive notice of Complainant’s USPTO registered BOSS mark at the time Respondent registered the disputed domain name. Furthermore, Respondent failed to respond to Complainant’s two demand letters.
Respondent failed to submit a Response in this proceeding. Respondent registered the <bosssale.us> domain name on May 16, 2017.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are as follows: HUGO BOSS Trademark Management GmbH & Co., KG; and HUGO BOSS AG. Complainant HUGO BOSS Trademark Management GmbH & Co. is the trademark management company for HUGO BOSS AG. Complainant claims that since the companies are related corporate entities—and that the rights of each are relevant to this proceeding—it is appropriate for the Complaint to be filed on behalf of both entities. The Panel accepts that the evidence in the Complaint is sufficient to establish a nexus or link between the Complainants. As such, the named Complainants shall be treated as a single entity in this proceeding.
The Panel finds that the disputed domain name, <bosssale.us>, is confusingly similar to Complainant’s valid and subsisting trademark, BOSS. Complainant has adequately plead its rights and interests to this mark. Respondent arrives at the disputed domain name by merely appending the generic word “sale” and the g TLD “.us” to the end of the of the trademark. This is inadequate to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use at the disputed domain name as Respondent is not an authorized reseller of Complainant’s goods, and offers to sell what appear to be counterfeit goods. See Compl. Annex 6.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent uses the <bosssale.us> domain name in bad faith because Respondent is using the disputed domain name to offer for sale counterfeit apparel products in order to disrupt Complainant’s business. Use of a domain name to disrupt a complainant’s business using a confusingly similar domain name to mislead consumers and offer counterfeit products can be evidence of bad faith per Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). Here, Respondent is apparently offering for sale counterfeit apparel products associated with Complainant’s BOSS mark without authorization, falsely indicating that they are somehow affiliated, connected, or associated with Complainant. See Compl. Annex 6. Therefore, the Panel finds that Respondent uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Finally, Complainant alleges that due to its widespread use of the BOSS mark and its trademark registrations with the USPTO, Respondent must have had actual notice of Complainant's rights in the mark prior to registration of the domain names. Given the fame of the mark and the totality of the circumstances, the Panel finds that Respondent did have prior actual knowledge of Complainant’s rights in and to the trademark BOSS.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of 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 <bosssale.us> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: March 1, 2018
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