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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hugo Boss A.G. v. Robert F. Walsh
Case No. D2000-1135
1. The Parties
The complainant is Hugo Boss A.G., a company incorporated under the laws of the Federal Republic of Germany, having a principal office and place of business in Metzingen, Germany ("the complainant").
The respondent is an individual by the name of Robert F Walsh whose address is 9146 S.83rd Court, Hickory Hills, Illinois 60457, USA ("the respondent").
2. The Domain Name and Registrar
The domain names, the subject of this dispute, are:
They were first registered on February 19, 2000.
The registrar of the domain names is Network Solutions Inc. of Herndon, Virginia, USA ("the Registrar").
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on September 8, 2000, and in hard copy on August 28, 2000. The latter was accompanied by payment in the required amount for a single panelist.
On September 6, 2000, a formal acknowledgement of receipt (complaint) was sent to the complainant.
On September 6, 2000, a request for registrar verification was sent to the Registrar, requesting confirmation that it had received a copy of the complaint from the complainant, that the domain name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.
On October 30, 2000, WIPO notified the respondent that he had failed to comply with the deadline indicated in the notification of complaint by not filing a submission in response.
On November 10, 2000, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the complainant and the respondent. In accordance with the complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Mr. Clive Elliott, and advised that the decision should be forwarded to WIPO by November 24, 2000.
On November 10, 2000, the case file was transmitted to the panel.
4. Factual Background
It is asserted that the complainant Hugo Boss AG, is the owner of the world famous trade name HUGO BOSS and trademarks: BOSS, HUGO, BOSS HUGO BOSS, HUGO and HUGO HUGO BOSS.
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 and accessories. The complainant has been in existence since 1948, in Germany and the BOSS marks have since that time becomes recognized all over the world.
The complainant has registrations in over twenty countries, including the United States and Canada, for the trademark HUGO BOSS. The marks are registered for everything from clothing and accessories, footwear, headwear, leather goods, time pieces, jewelry, eye wear, personal care products, sporting articles, toys, tobacco products and other goods. Each mark is registered for a wide variety of goods and services.
The most distinctive part of all of these marks is the word BOSS which is the way in which the complainant’s marks are actually identified in practice.
The complainant has successfully defended against bad faith use of its BOSS marks in court proceedings against a cigarette manufacturer using the mark BOSS in association with cigarettes in Benelux and against the use of the mark BOSS and BOSS! in association with beverages in Austria and Australia. It was held "the most distinctive part of all these marks [: BOSS, HUGO, BOSS HUGO BOSS, HUGO and HUGO HUGO BOSS] is the word BOSS, which is the way in which the plaintiff’s [complainant] marks are actually identified in practice.."
As no response has been filed, little is known by the Panelist about the respondent, other than he appears to be an individual residing in Illinois, USA.
The complainant asserts that it currently operates a web site in several languages at "hugoboss.com". This web site provides information on HUGO BOSS AG’s company, brands, financial information and press releases.
The respondent has no apparent connection with the domain names "bossshoes.com", "bossshoes.net", "bossshoes.org".
It is also asserted that the respondent has contacted the complainant seeking to sell the domain names for a substantial profit and is making no legitimate commercial use of the domain names.
The complainant asserts that the respondent has registered the domain names for the sole and exclusive purpose of selling them back to the complainant at a substantial profit, greatly in excess of its documented out-of-pocket costs directly related to the registration of the domain names.
In the absence of any denial by the respondent, the complainant’s evidence and assertions have to be accepted at face value as correct.
6. Discussion and Findings
Paragraph 4(a) of the policy requires that the complainant must prove each of the following:
(i) The domain names are identical or confusingly similar to the trade mark; and
(ii) The respondent has no right or legitimate interest in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Identical or confusingly similar
In the Panelist’s view, the domain names "bossshoes.com", "bossshoes.net", "bossshoes.org" are prima facie confusingly similar to the complainant’s BOSS, HUGO BOSS and BOSS HUGO BOSS trade marks, the trade name of the complainant HUGO BOSS AG and the domain name and web site "hugo boss.com".
The sole difference between the complainant’s BOSS marks and the disputed name is the word ‘SHOES’ which is descriptive of goods closely associated with the complainant. As a descriptive and non-distinctive element it does not materially affect the confusing nature of the domain names. In this regard, it is noted that in a recent WIPO decision, the panel concluded that the domain name "att2000.com" is confusingly similar to the ATT and AT & T marks owned by AT & T Corp and ordered the transfer for the domain name.
No right or legitimate interest
The respondent is not a licensee of the complainant, nor is he otherwise authorized to use the complainant’s BOSS marks. The term BOSS SHOES is not the subject of any trade mark registration in which the respondent has rights.
In addition, the respondent’s lack of any legitimate interest in the domain names can be inferred from the correspondence between the complainant’s counsel and the respondent. By letter dated March 6, 2000, John P Walsh wrote to the complainant offering for sale on behalf of "one of its clients" the domain names "bossshoes.com", "bossshoes.net", "bossshoes.org" which it stated were available for purchase. Significantly, particularly in the absence of a denial, the date of registration of the said domain names is February 19, 2000; the exact date of a newspaper article regarding Hugo Boss Fashions Inc and the release of its new collection of shoes bearing the BOSS marks.
By e-mail dated July 15 2000, John Walsh wrote to counsel for the complainant offering to pay US$100 for the three domain name registrations: "bossshoes.com", "bossshoes.net", "bossshoes.org".
The complainant asserts that John Walsh is directly related to Robert Walsh, the domain name registrant and respondent herein. Whether this is so or not, John Walsh at least purported to represent the respondent.
Registered and used in bad faith
On the face of it, by registering and seeking to sell the domain names to the complainant, the respondent is using the domain names in an attempt to profit, for commercial gain, by the registration of the domain names.
Several administrative panel decisions have ruled that the practice of registering domain names of well-known third parties is evidence of bad faith registration.
Finally, as far as the Panelist is aware, the respondent has at no time had a legitimate offering of goods or services posted on its web pages at "bossshoes.com", "bossshoes.net", "bossshoes.org".
Accordingly, no mitigating factors are known to exist.
7. Discussion and decision
In the absence of any evidence or submission from the respondent, the Panelist has to weigh the facts as best as is possible. The evidence and argument put forward by the complainant support the view that all the elements of paragraph 4(a) of the policy have been satisfied and that relief is appropriate and necessary.
In view of the above, the domain names should be transferred to the complainant.
Clive L. Elliott
Dated: November 15, 2000