HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Hashem Khatib
Case No. D2015-1338
1. The Parties Complainant is HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG of Metzingen, Germany (together “Complainants” or “HUGO BOSS”), both represented by Dennemeyer & Associates S.A., Germany.
The Respondent is Hashem Khatib of Riyadh, Saudi Arabia.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2015. On July 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 30, 2015, 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 together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2015. The Response was filed with the Center on August 14, 2015.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on August 31, 2015. 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 Complainants HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG are entities whose name are derived from the name of their founder, Hugo Boss. HUGO BOSS was founded in 1924 in Germany and is an international fashion group of companies in the premium fashion retail market. It is also an internationally recognized designer and manufacturer of a comprehensive product range encompassing shoes. According to the Complainants, HUGO BOSS is the owner of numerous trademark registrations in various countries for the trademark HUGO BOSS, including in Saudi Arabia (since 1987; see Annex 4 to the Complaint). In Saudi Arabia, the Complainants have two registrations for the mark HUGO BOSS, bearing registration numbers 1157164, and 1157/64. These trademarks are registered for goods and services for the international classes 9 and 25. They also own numerous domain names which incorporate the registered trademarks either alone or together with descriptive words, such as (since April 24, 1997). Respondent Hashem Khatib registered the Disputed Domain Name on March 5, 2014.
5. Parties’ Contentions A. Complainant (a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights
HUGO BOSS was founded in 1924 in Germany and is an international fashion group of companies in the premium fashion retail market. It is also an internationally recognized designer and manufacturer of a comprehensive product range encompassing shoes. Complainants own numerous trademark registrations for the word mark HUGO BOSS around the world, including Saudi Arabia (since 1987; see Annex 4 to the Complaint). Complainant has leveraged targeted marketing measures to raise the appeal of its brands including digital channels.
It is inconceivable that Respondent was not aware of Complainants or their HUGO BOSS mark at the date of registration of the Disputed Domain Name, and this is supported by the infringing nature of the Disputed Domain Name. The Disputed Domain Name wholly incorporates the words “Hugo Boss”. And differs from the Disputed Domain Name merely by the generic Top-Level Domain (“gTLD”) “.shoes”. Such difference does not have any impact on the overall impression of the dominant portion of the names “HUGO BOSS” and thus does not distinguish the Disputed Domain Name from Complainants’ trademark.
(b) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
Respondent has never been licensed by Complainants or otherwise authorized to use, register or apply for any domain name incorporating their trademark. Complainants are the only holder of rights to the company name “Hugo Boss” and they never consented nor authorized the registration of domain names which contains their company name.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name since the website does not lead to any active webpage. And due to Complainants’ fame, it is inconceivable for Respondent to legitimately use the Disputed Domain Name.
(c) The Disputed Domain Name is registered and are being used in bad faith
Complainants are internationally famous and especially have had their registered HUGO BOSS trademarks in Saudi Arabia for around 28 years. It is hardly persuasive that Respondent was not aware of Complainants or their activities when the Disputed Domain Name was registered.
Since no active webpage is led through Disputed Domain Name, no bona fide offering of goods or services can be found. Further, the Disputed Domain Name has been registered only to create confusion and mislead the Internet users into believing that the Complainants and the Respondent are affiliated or endorsed also because the gTLD used in the Disputed Domain Name, “shoes”, matches what Complainants are famous for.
Moreover, bad faith can be inferred when Respondent was asked by Complainants to return the Disputed Domain Name, Respondent proposed to sell it name back to Complaints for USD 17,400. Another proof of bad faith is through a search on WhoIs that Respondent has openly listed for sale at USD 14,350.
B. Respondent Respondent responded on August 14, 2015 as follows:
“Respondent agreed that Disputed Domain Name is similar to the registered trademark.
Respondent however averted its legitimate rights or interests for the reason that the purpose to register such domain name is to create an informational website about shoes. It has not any relation with any Complainants’ competitors and has no intention of selling goods and/or services using the domain name.”
Respondent denied his intention of selling the Disputed Domain Name to the complainants is in bad faith and averted that seeking for such coverage was merely a reasonable request to compensate prior expenses and costs to maintain the domain name.
6. Discussion and Findings According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is identical to Complainants’ mark.
It is settled that HUGO BOSS has been considered internationally well-known based on the fact that HUGO BOSS was founded 90 years ago and its fame, reputation and goodwill in the fashion industry as well as a manufacturer of a comprehensive product range encompassing shoes. The Disputed Domain Name incorporates Complainants’ trademark and differs from Complainants’ trademark only the addition of the TLD “.shoes”. UDRP panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a Domain Name wholly incorporates a Complainants’ registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such Marks. Further, the use of top level domain (“TLD”) is not typically considered when comparing the mark and the domain name. See The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO Case No. D2000-0113) and Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000 0102. The suffix “.com” is of no significance. Respondent also admitted the identity of the Disputed Domain Name and trademark in its Response. Therefore, the first element is established.
B. Rights or Legitimate Interests
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a Respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, Complainant need only make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. “Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Name. Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819.
In this case the Panel finds that Complainants have made a prima facie showing that Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a) of the Policy.
This finding is inter alia based on the following, non-disputed, circumstances:
(1) Complainants have no relationship with Respondent and has never authorized Respondent to use either their trademark or company name to apply for domain name.
(2) Respondent’s use of the Disputed Domain Name cannot constitute a bona fide offering of goods or services considering the fact that Disputed Domain Name does not lead to any active webpage.
Thus, the Respondent did not rebut the Complainants’ prima facie case.
In response, Respondent contends that the sole purpose to register the Disputed Domain Name is to create an informational website about shoes. The Panel finds such assertion to be unsatisfactory because it is unnecessary to use HUGO BOSS or any other trademarks to achieve such objective and furthermore, the Respondent failed to provide any evidence constituting demonstrable preparation to use the Disputed Domain Name for such purposes.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests with respect to the Disputed Domain Name and the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainants and that Respondent’s bad faith registration and use of the Disputed Domain Name have been proven.
Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a Disputed Domain Name:
(i) Circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainants who is the owner of the trade mark or service mark, or to a competitor of Complainants, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) You [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Disputed Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) You [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location.
Several facts have brought the attention to this Panel to infer Respondent’s bad faith. Complainants have alleged that the Respondent tried to sell the Disputed Domain back to them at a price of USD 17,400. Only based on this fact, it may not be reasonable to conclude that Respondent registered the Disputed Domain Name with sole intention to re-sell it. It is however further evidenced that Respondent itself has listed this Disputed Domain Name for sale at USD 14,350 . No material to back up how the price is derived from has been presented, and no explanation regarding the difference between two prices has been proffered as well. The information provided in Annex 1 and Annex 2 by the Respondent in the Response is a much smaller number than either of above-mentioned price.
The Panel finds that the circumstances set out in paragraph 4(b)(i) are fulfilled here, and that the third element is established.
7. Decision In light of the foregoing, the Panel decides that the Disputed Domain Name registered by Respondent is identical to the trademark of Complainants; that Respondent has no right or legitimate interest in respect of the Disputed Domain Name; and that Respondent registered and used the Disputed Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the Disputed Domain Name be transferred to Complainants.