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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hugo Boss A.G. v. Dr. Yang Consulting
Case No. D2000-1109
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), Paragraph 3(b).
The Administrative Panel consisting of three members was appointed on December 11, 2000 by WIPO.
2. The Parties
The Complainant in this administrative proceeding is Hugo Boss, A.G., a corporation incorporated under the laws of the Federal Republic of Germany, having a principal office and place of business in Metzingen, Germany.
The Respondent in this Administrative Proceeding is Dr. Yang Consulting, whose address is listed as Suite 1001, 39 Pemberton Avenue, Toronto, Ontario M2M 1X9, Canada. Correspondence to the Center on behalf of the Respondent was from Weidong Yang.
3. The Domain Name and Registrar
The domain name is <myhugoboss.com>
The Registrar is Internet Domain Registrars, operating as Registrars.com, 475 Sansome Street, Unit 570, San Francisco, California 94111, U.S.A.
4. Jurisdiction and Related Matters
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and the Rules.
5. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 23, 2000, by fax, on August 24, 2000 with one original and four hard copies with annexes and on September 7, 2000 by email. An Acknowledgement of Receipt dated September 7, 2000, was sent by e-mail by the Center to the Complainant. The Center dispatched to the Registrar a Request for a Registrar Verification on September 7, 2000. On September 25, 2000, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding and on September 26, 2000 made a correction to the Notification of Complaint and Commencement of Administrative Proceeding. A Response was received by email on October 7, 2000. An Acknowledgement of Receipt dated October 14, 2000 was sent by the Center.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
On October 7, 2000, the Respondent sent an email to the Center reacting to the Complaint, but taking no substantive position on the merits of the dispute.
A three-member Administrative Panel was constituted at the request of Complainant. In the absence of a panel selection by the Respondent, a substitute panel member was appointed by the Center.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
6. Factual Background
Because there is no substantive submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant, whose name is derived from the name of its founder Hugo Boss, is an internationally recognized designer and manufacturer of high quality clothing. It has been in existence since 1948 in Germany and is the owner of the trade name and trade mark HUGO BOSS.
The Complainant, and the HUGO BOSS trade mark have grown into a brand recognized all over the world, benefitting from intensive brand extension.
In Canada, where the Respondent resides, the Complainant owns the following trade mark registrations: Registration Nos. TMA400,353, TMA455,614 and TMA525,362 for HUGO BOSS and Registration Nos. TMA502,586, TMA505,804, TMA513,662 and TMA524,932 for BOSS HUGO BOSS & Design. The marks are registered for many products including clothing and accessories, footwear, headwear, leather goods, time pieces, jewelry, eye wear, personal care products, sporting articles, toys, tobacco products and other goods for personal use and wear. Each mark is registered for a wide variety of wares and services.
The Complainant has registrations in over twenty other countries for the trade mark HUGO BOSS, as well as Benelux registrations for the marks HUGO BOSS, BOSS, BOSS HUGO BOSS and HUGO HUGO BOSS that are the subject of International Registration Nos. 513.257, 515.189, 516.345, 604.811 and 606.620. The Complainant has defended successfully against bad faith use of its trade marks in court proceedings against a cigarette manufacturer using the mark BOSS in association with cigarettes in Benelux (Brussels) and against the use of the mark BOSS and BOSS! in association with beverages in Austria and Australia. In these proceedings, survey evidence presented to the courts showed that brand recognition of the mark BOSS as identifying the Complainant’s trade marks were as high as 68% of the Austrian population above the age of 15 years and even higher among users. These court decisions also reveal significant world wide sales revenues for products bearing the HUGO BOSS trade marks. For example, in 1987 HUGO BOSS AG’s world wide turnover was in excess of 500 million Deutsche Marks. From 1989 to 1994 HUGO BOSS AG’s turnover in Australia alone had risen from 3 to 14 million Australian dollars annually.
Complainant also currently operates a web site in several languages at HUGOBOSS.COM. It provides information on the company, brands, financial information and press releases.
The Respondent is not a licensee of the Complainant or otherwise authorized to use the Complainant’s name and mark.
On or about March 3, 2000, solicitors for the Complainant wrote to the Respondent seeking the transfer of the domain name for the fee of $70.00, being the cost of the domain name registration. The Respondent replied on March 6, 2000, by e-mail, stating "…originally I didn’t think that I want to sale that domain name and right now if your client want to get that domain name they should pay me 1 million U.S. As I said in my last e-mail, if your client want to get that domain name, give me a price, but you gave me a really cheap price! Then I increased my price to 1 million U.S., the price will be increased if the domain name go to auction."
The web site myhugoboss.com has featured confused information, including a notice that the web site is under construction, an advertisement for the registration of domain names for free at yournamefree.com and a listing of a number of other names which include the words "hugoboss". At one point in time, the subject domain name was linked directly to yournamefree.com.
A visit to the web site on August 22, 2000, revealed that it was linked to www.2001photo.com/gallery1, which features nude photographs of men and women, with the moving header "Welcome to MYHUGOBOSS.COM! A home page for erotica. Enjoy your stay!"
7. Parties’ Contentions
The Complainant relies on its use and registrations of its name and mark and says that the subject domain name is confusingly similar. Pointing to the use that the Respondent has made of the subject domain name and the fact that it has no authorization from the Complainant to use the Complainant’s name and mark, it takes the position that the Respondent has no legitimate interest in the subject domain name. The facts that he has linked the subject domain name to a nude photograph site and demanded money for it are relied on as evidence establishing bad faith by the Respondent in the registration and use of the subject domain name.
The Respondent has not made a submission on the merits. In an email sent to the Center on October 7, 2000, he said:
"As response to your emails and mail, this is the only reply you will get from me, no normal mail will be followed. I don't want to spend money for this issue instead of donating the money for a goodwill organization (e.g. United Way). As you all know, every complaint blames the other side. I understood that the Hugo Boss AG could not be an exception. As I said before that if anything included HUGOBOSS couldn't be related with Hugo Boss AG. You should know this. I can give you much more examples for the domain name as follows:
<hb.com >, <myhb.com>, <blackhugoboss.com>, <whithehugoboss.com>, <xxxhugobossxxx.com> etc.
There are thousands of such kind of combination, but they are not in such kind of relationship with Hugo Boss AG. If someone registered HUGOBOSSAG.COM, this may be the case you guys should care about it.
As I said, this is the only response to this issue and no normal mail to be followed. Please don't send me any such kind of think Express Letter any more, donate the money to the United Way or any other goodwill organization, they need money, and this case waste money.
You can always contact me at the address you have.
Thanks for not wasting my time again and do some good things for good purpose. Thanks again."
8. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
i) a domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
ii) the Respondent has no rights or legitimate interest in respect of the domain name;
iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear on the evidence that the Complainant has a longstanding use of its name "HUGO BOSS" and that it has registered trade marks that incorporate those words in many parts of the world, including Canada where the Respondent resides.
The subject domain name differs from the Complainant’s name and mark only by the addition of letters "my". This clearly is confusingly similar to the Complainant’s name and mark.
Other ICANN Administrative Panels have so concluded in analagous cases: Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. CPIC NET, Case No. D2000-0685 (WIPO, Sept. 12, 2000); AT&T Corp., v. Tala Alamuddin, WIPO Case No. D2000-0249 (May 18, 2000).
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent’s Legitimate Interest
The Respondent’s use of the subject domain name is inconsistent and confusing. There is no evidence of a purpose other than to sell, embarrass or harass the Complainant.
At present, the web site displays a confusing array of information that leads to no apparent objective. A screen appears stating that the site is not available, but there also is the leader referring to an exotic site. In addition, a screen listing a number of domain names which include the letters "hugoboss" is displayed, but those sites when located are not operational.
In his communication to the Center, the Respondent suggested no legitimate interest in the subject domain name.
In the past, the domain name has been linked to a nude photograph site with no apparent logical connection to either the subject domain name or to the Complainant.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The evidence is clear that the Respondent has offered to sell the subject domain name to the Complainant for a sum considerably in excess of the Respondent’s out-of-pocket costs directly related to the domain name. His response to this proceeding also smacks of bad faith as does the link he made of the domain name to a nude photograph site.
The Administrative Panel is satisfied that the Complainant has established bad faith as required by paragraph 4(a)(iii).
On the basis of the evidence and the findings and conclusions made by the Administrative Panel, the Complainant has established its case.
The Complainant seeks the transfer of the subject domain name myhugoboss.com to it.
It is so ordered.
Edward C. Chiasson, Q.C.
Hugues C. Richard, Esq. Thomas H. Webster, Esq.
Dated: December 18, 2000