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WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

HUGO BOSS A.G. v. LukcyLukes a.k.a. LUCKYLUKES.COM a.k.a. David Lie

Case No. DAS2000-0001

 

1. The Parties

The Complainant in this administrative proceeding is HUGO BOSS AG, Dieselstraße 12, 72555 Metzingen, Germany, represented by May M. Cheng, Fasken Martineau DuMoulin LLP, Barristers & Solicitors, 4200 Toronto Dominion Bank Tower, Box 20, Toronto-Dominion Centre, Toronto, Ontario M5K 1N5, Canada, hereinafter the "Complainant".

Respondent is LukcyLukes a.k.a. LUCKYLUKES.COM a.k.a. David Lie, Osterhausgate 21D, Oslo, 0813, Norway, hereinafter the "Respondent".

 

2. Domain Name and Registrar

The domain name at issue is "hugo-boss.as", hereinafter referred to as the "Domain Name". The registrar is ASNIC (AS Domain Registry).

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on September 12, 2000 (electronic version) and September 14, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is October 5, 2000.

On September 25, 2000, the Center transmitted via email to ASNIC a request for registrar verification in connection with this case. On September 29, 2000, ASNIC transmitted via email to the Center its verification response, confirming that the registrant is LukcyLukes, that the administrative contact is David Lie, LukcyLukes, that the billing contact is Webuset faktura and that the technical contact is WebHuset Hostmaster.

Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on October 5, 2000, to the Respondent and to Network Solutions, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, and e-mail, in accordance with the following contact details:

LuckyLukes
(Attn.: David Lie)
Osterhaugsgate 21D
Oslo 0183
Norway

Webhuset AS
Pb 45 Lakesvaag
Bergen 5847
Norway

Email: Dav-1@online.no
David@myluckyworld.com
David@big-webbers.no
David@big-webbers.com
Hostmaster@webhuset.no
Postmaster@hugo-boss.as

The Center advised that the response was due by October 24, 2000. However, no response on the substance matter of the complaint was submitted and consequently, the Center issued a Notification of Respondent Default on October 26, 2000.

In view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist on November 10, 2000.

Having received Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence on November 10, 2000, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

The Administrative Panel shall issue its Decision based on the complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant, whose name is derived from the name of its founder Hugo Boss, is an internationally recognized designer and manufacturer of quality clothing.

According to Complainant, Complainant is the owner of numerous trademark registrations in various countries for the trademarks "HUGO BOSS". In Norway, where the Respondent resides, the Complainant has two registrations for the mark "HUGO BOSS", bearing registration numbers 430,400 and 136,013. These trademarks are registered for goods and services for the following international classes: 9, 14, 16, 18, 24, 25, 28 and 34.

Complainant has successfully opposed the use of its trademarks in court proceedings against a cigarette manufacturer using the mark "BOSS" in association with cigarettes in the Benelux (Brussels) and against the use of the mark "BOSS" and "BOSS!" in association with beverages in Austria and Australia.

Complainant currently operates a web site in German and English at "HUGOBOSS.COM" and "HUGO-BOSS.COM", with identical content. This web site provides information on Complainant, Complainant’s brands, financial information and press releases.

It appears from the WHOIS directory of Network Solutions that Complainant or its subsidiaries have registered various domain names incorporating the names "HUGO", "BOSS" and "HUGO BOSS". These are:

"BOSSSHOPS.NET"

"HUGOBOSSONLINE.ORG"

"BOSS-HUGOBOSS.COM"

"HUGOBOSSONLINE.COM"

"HUGOBOSSONLINE.NET"

"BOSSSHOPS.ORG"

"HUGOHUGOBOSS.COM"

"BALDESSARINI-HUGOBOSS.COM"

"HUGO-HUGOBOSS.COM"

"HUGOBOSS-UK.COM"

"HUGO.COM"

"HUGOBOSS-BODYWEAR.COM"

"MYHUGOBOSS.NET"

"BOSSSHOPS.COM"

"MYHUGOBOSS.ORG"

"HUGOBOSSSPORT.COM"

"HUGOBOSSBODYWEAR.COM"

"HUGOBOSSGOLF.COM"

"HUGOWOMAN.COM"

"HBSHOP.NET"

"BALDESSARINIHUGOBOSS.COM"

It appears from the exhibits to the complaint that Respondent sent an email to Complainant on July 19, 2000, with as subject matter "Regarding the Domain www.hugo-boss.as", with following content:

"The domain has been bought up by the company luckylukes.com

Its now for sale, and there are alot of serious offers regarding the domain.

But since you got the hugo-boss.com we wanna hear if you are interested in making an offer for the domain.

It will be sold to the highest bidder.

Regards, Luckylukes.com"

After the filing of the complaint, Respondent addressed various emails to the Center indicating that he may be ready to sell the Domain Name at cost or even to give up the Domain Name. Complainant indicated that for a variety of reasons, it did not wish to pursue these offers.

There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant’s trademarks.

The Domain Name links to the web page of Big Webbers Consulting located at http://www.big-webbers.no/. According to the NORID (the Norwegian Domain Name registry) WHOIS database, the domain name "big-webbers.no" belongs to Big Webbers Consulting David Lie, Skjelavikvn 42, 5515 Haugesund, Norway. David Lie is also the name mentioned as the administrative contact in the registration form of the Domain Name.

 

5. Parties Contentions

Complainant

Complainant contends that the Domain Name is confusingly similar to Complainant’s trademarks and registered domain names.

Furthermore, Complainant argues that Respondent has no legitimate right or interest in the Domain Name because:

  • Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use the Complainant’s mark. The name "HUGO BOSS" is not the subject of any trademark registration in which the Respondent has rights. Moreover, to the Complainant’s knowledge, the Domain Name is not a legitimate name of any business belonging to the Respondent nor in any other way identified with the Respondent.
  • Respondent’s lack of any legitimate interest in the Domain Name can be inferred from the correspondence between Complainant and Respondent.
  • There is no actual service offering at the Domain Name. With regard to the Big Webbers Consulting web site it is linked to, there is no indication at this web site as to what form of "consulting" services are offered by the Respondent, if any.
  • The Respondent’s linking of the Domain Name to the Big Webbers Consulting web site shows a complete and utter lack of genuine commercial interest in the use of the Domain Name and is clearly intended to redirect traffic associated with the Complainant’s web sites "HUGOBOSS.COM" and "HUGO-BOSS.COM" to the benefit of the Respondent and to the detriment of the Complainant’s business.
  • Based on the foregoing, it is apparent that the Respondent has only registered the Domain Name for the sole and exclusive purpose of diverting traffic to the Complainant’s web sites and disrupting its business and/or selling it back to the Complainant at a huge profit and lacks any legitimate interest in the Domain Name.
  • It is obvious that the Respondent has registered the Domain Name primarily for the purpose of selling or otherwise transferring the Domain Name registration for valuable consideration greatly in excess of its documented out-of-pocket costs directly related to the registration of the Domain Name.
  • The Respondent has registered the Domain Name in order to prevent the owner of the trademark, the Complainant, from enjoying the exclusive right to the domain names "HUGOBOSS.COM" and "HUGO-BOSS.COM", by registering a confusingly similar domain name, namely, HUGO-BOSS.AS.

Finally, Complainant argues that the Domain Name has been registered and used in bad faith, because:

  • By linking the Domain Name to an unrelated web site, the Respondent is using the Domain Name in an intentional attempt to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s trademark.
  • The Respondent has at no time had a legitimate offering of goods or services posted on its web pages at the Domain Name.
  • There has been and can be no legitimate non-commercial use or fair use of the Domain Name by the Respondent. It is evident that the Respondent is attempting to misleadingly divert consumers and to cause confusion and interfere with the Complainant’s business by using its trademarks, trade name and domain names.

Consequently, Complainant requires the transfer of the Domain Name registration.

Respondent

No response on the substance matter of the complaint has been submitted.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall 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 directs that the Complainant must prove each of the following:

(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has right; and,

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,

(3) that the Domain Name has been registered and is being used in bad faith.

a. Identity

The Domain Name is "hugo-boss.as".

"HUGO BOSS" is a registered trademark of Complainant.

In view of the above, the Administrative Panel finds that the Domain Name is confusingly similar to the trademark of Complainant.

b. Rights or Legitimate Interests

Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has he ever been known by this name.

The intent to sell the Domain Name as well as the further use made of it by Respondent, as evidenced by Complainant, show Respondent’s lack of genuine interest in the Domain Name.

In addition, by not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

The Administrative Panel therefore finds that Respondent has no legitimate right or interest in the Domain Name.

c. Registration and Use in Bad Faith

Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:

  • "HUGO BOSS" is a registered trademark of Complainant, which benefits of worldwide fame.
  • The Domain Name is merely used for linking purposes and resolves to a web page which is unrelated to Complainant or Complainant’s activities or products.
  • Taking into consideration the fame of Complainant and Complainant’s trademarks, it may be reasonably assumed that Respondent knew of Complainant and its trademarks when he registered the Domain Name, and that Respondent registered the Domain Name because of Complainant’s trademark and its inherent value. This is also sustained by Respondent’s unsolicited email to Complainant, asking whether Complainant was interested in purchasing the Domain Name and indicating that it would be sold to the highest bidder.
  • Respondent did not submit any response on the substance matter of the complaint.

In view of the above, it is the Panel’s opinion that when registering the Domain Name, Respondent knowingly chose a name which is identical to the trademark of Complainant, thereby intentionally creating a situation which is at odds with the legal rights and obligations of the parties.

By taking the unsolicited initiative to offer the Domain Name for sale to Complainant, the Panel also finds that circumstances are present indicating that Respondent has registered or 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 that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name.

In addition to that, by linking the Domain Name to the web site of Big Webbers Consulting, it is the Panel’s opinion that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

Finally, by not submitting a response, Respondent has failed to invoke any circumstances which could demonstrate that it did neither register, nor use the Domain Name in bad faith.

In conclusion and in view of the above, it is the Panel’s opinion that Respondent registered and used the Domain Name in bad faith.

 

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain Name "hugo-boss.as" registered by Respondent is confusingly similar to the trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, and that Respondent registered and used the Domain Name in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name "hugo-boss.as" be transferred to Complainant.

 


 

Geert Glas
Sole Panelist

Dated: November 27, 2000

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/das2000-0001.html

 

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