The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
The Respondent registered the Disputed Domain Names many years after the registrations of the Complainant’s trademarks. The HUGO BOSS and BOSS trademarks are a well-known trademarks, as previously held by UDRP Panels (see Hugo Boss Trade Mark Management GmbH & Co. KG, Hugo Boss AG v. cheng yong, WIPO Case No. D2015-1688; HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Terry Dong, WIPO Case No. DCO2017-0033; HUGO BOSS Trade Mark Management GmbH & Co and HUGO BOSS AG v. Charles Carranza and William Tillery, CAC Case No. 101901; HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. zeng aiqin, WIPO Case No. D2016-2296), registered in many countries and the Complainant enjoys a strong online presence. The Complainant is also very active on social media (Twitter, Facebook, Instagram) to promote its mark, products and services. The Complainant is followed by 1.7 million on Instagram, 8,247,313 on Facebook, and 701,000 people on Twitter (Annex 8) (see, Laboratoires M&L v. Zhaoxingming, CAC Case No. 102277). By conducting a simple online search regarding the term “Hugo Boss” or “Boss”, the Respondent would have inevitably learnt about the Complainant, its trademark and business (see Intesa Sanpaolo S.p.A. v. Abayomi Ajileye, CAC Case No. 102396). It therefore inconceivable that the Respondent was unaware of the existence of the Complainant when he registered the Disputed Domain Names.
Furthermore, the Disputed Domain Names alongside the Complainant’s trademark include the English terms “factory”, “outlet” or “cheap” which are a direct reference to the Complainant’s field of activity in designing, manufacturing and selling fashion apparel. Moreover, the Disputed Domain Names <hugobossfroutlet.com>, <hugobossclearancesusa.com>, and <bossoutletusa.com> comprise the abbreviations “fr” and “usa”. In light of the fact that the Complainant has a long and very strong commercial presence in France and the United States of America, two countries which are part of the Complainant’s six core markets it is very likely that the Respondent registered the Disputed Domain Names having the Complainant in mind. The inclusion of the Complainant’s trademark with the aforementioned descriptive or geographical terms in the second level portion of the Disputed Domain Names reflects the Respondent’s clear intention to create an association, and a subsequent likelihood of confusion, with the Complainant’s trademark in Internet users’ mind.
The Disputed Domain Names <bossclearanfactory.com> and <hugobossfroutlet.com> resolve to a website reproducing the Complainant’s trademark, mimicking the look and feel of the Complainant’s website and offering clothing products. The Disputed Domain Names <hugobossclearancesusa.com> and <bossoutletusa.com> have also resolved to highly similar websites.
These references to the Complainant’s trademark – in the Disputed Domain Names and in the associated websites – catch the Internet users’ attention and infer that the website associated with the Disputed Domain Names are or were connected to, or managed, or authorized or sponsored by the Complainant. Such use of the Disputed Domain Names creates a likelihood of confusion in Internet users’ mind and may lead them to buy products displayed on the websites currently associated with <bossclearanfactory.com> and <hugobossfroutlet.com>.
It is very likely that the Disputed Domain Names are owned by the same individual or organization “Gueijuan Xu”. Moreover, the Respondent is familiar of such conduct. In a similar case, UDRP Panels have held that the Respondent’s conduct of using domain names to resolve to websites purporting to sell products under the complainant’s trademark at substantial discounts, claiming to be an official online store amounts to bad faith registration and use (see for instance, Philipp Plein v. Gueijuan Xu, WIPO Case No. D2017-2535; Salvatore Ferragamo S.p.A. v. Gueijuan Xu, WIPO Case No. D2018-0572; Fendi S.r.l. v. Gueijuan Xu, WIPO Case No. D2018-0749; Philipp Plein v. Gueijuan xu, CAC Case No. 101584). The Respondent therefore appears to be engaged in a pattern of conduct, as on separate occasions it has registered trademark-abusive domain names (see WIPO Overview 3.0, section 3.1.2).
The disputed domain names <hugobossclearancesusa.com> and <bossoutletusa.com> resolved to the reproducing the Complainant’s trademark, mimicking the look and feel of the Complainant’s website and offering clothing products. They are now inactive. According to the screen captures saved by the search marchine Wayback Marchine, the Disputed Domain Name <hugobossclearancesusa.com> resolved to an active website until January 2019. Since proximately March 2019, it resolved to a page displaying the following message “Error. Page cannot be displayed. Please contact your service provider for more details. (31)”. The Disputed Domain Name <bossoutletusa.com> resolved to an active website until the end of August 2019.
Previous UDRP Panels have held, under the doctrine of passive holding, that “the non-use of a domain would not prevent a finding of bad faith” (see “WIPO UDRP Questions, Third Edition”, section 3.3). More precisely, “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” (see Telstra Corporation Limited v. Nuclear Marshmallows). The circumstances of the case may indeed be such that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law” (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the present case, several factual considerations are clear indicators of bad faith use under the passive holding doctrine.
- The disputed domain names <bossoutletusa.com> and <hugobossclearancesusa.com> are confusingly similar to the Complaint’s well-known HUGO BOSS and BOSS trademarks. The Complainant’s trademarks were registered and used for many years before the registration of the Disputed Domain Names (See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Volkswagen AG v. Guy Buchet, WIPO Case No. D2016-0959).
- Moreover, the Respondent could not ignore the Complainant and its trademark when it registered the disputed domain names <bossoutletusa.com> and <hugobossclearancesusa.com>. The Complainant has an established commercial presence in China where it has offices and a strong online presence. The disputed domain names also incorporate the Complainant’s trademark with the addition of terms “USA” – country where the Complainant has subsidiaries and has a strong commercial presence –, “outlet” and “clearance” – words that may refer to the fashion sales.
- Furthermore, the Disputed Domain Names <bossoutletusa.com> and <hugobossclearancesusa.com> do not currently resolve to any active website or online location that would testify of a legitimate or good faith use of the disputed domain names. This statement is reinforced by the fact that the Disputed Domain Names previously resolved to active websites whom the use was not legitimate nor in good faith. There is therefore no evidence of any actual or contemplated good-faith use of the Disputed Domain Names.
- The Respondent also chose not to reply to the cease and desist letter sent by the Complainant which infers bad faith (see Arla Foods Amba v. Mlanie Guerin, CAC case No. 101640; Medela AG v. Donna Lucius, CAC case No. 101808).
The overall described circumstances are clear demonstration of the implausibility of any good faith use of the Disputed Domain Names (see Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
In view of the above, the Respondent’s conduct falls within the meaning of Paragraph 4(a)(iii) of the Policy.
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