{ "case_number": "CAC-UDRP-101901", "time_of_filling": "2018-02-22 09:20:53", "domain_names": [ "hugo-bossoutlets.com ", "tophugobosssuits.com " ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "HUGO BOSS Trade Mark Management GmbH & Co ", "HUGO BOSS AG" ], "complainant_representative": "BrandIT GmbH", "respondent": [ "Charles Carranza" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nIn the case at hand there are two Complainants. \r\n\r\nThe first complainant HUGO BOSS Trade Mark Management GmbH & Co. KG (hereinafter \"Complainant 1\") and the second complainant HUGO BOSS AG (hereinafter \"Complainant 2\", collectively, “Complainants”), are part of the world-renowned HUGO BOSS Group.\r\n\r\nComplainants are a well-known leading fashion company, founded in 1924 in Germany. It manufactures, markets and retails clothing, shoes and other accessories, as well as fragrances, skincare products, watches, eyewear and kidswear under various trademarks including HUGO BOSS, BOSS and HUGO. The Complainants employ almost 14,000 people worldwide and generated net sales of EUR 2.8 billion in fiscal year 2015. \r\n\r\nThe Disputed domain name is registered in the name Charles Carranza. The Disputed domain name is registered in the name William Tillery.\r\n\r\nComplainants contend that the entities which control both domain names at issue are effectively controlled by the same person and\/or entity. \r\n\r\nComplainants provide the following support for consolidation for the domains and :\r\n\r\n(i)\tThere are similarities in the details under which the Disputed domain names are registered, both are US addresses and give the same details for the Registrant Name and Registrant Organisation;\r\n\r\n(ii)\tThe IP Location for both Domain Names is identical, namely California – Los Angeles – Psychz Networks and the IP Address is almost the same, with only one digit difference, respectively 45.35.198.201 and 45.35.198.200;\r\n \r\n(iii)\tThe domains were both registered on the same day, namely 27 April 2017 using the same Registrar “domain.com”;\r\n\r\n(iv)\tThe websites are both using the same server type, namely Apache\/2.2.15;\r\n\r\n(v)\tThe content\/ layout of the websites associated with the Disputed Domain Names share many common and identical elements, including that almost all the text within the sites are identical and there are identical customer registration forms;\r\n\r\n(vi)\tThe nature of the marks at issue – both domains are being used to promote an online store, claiming to sell discounted HUGO BOSS articles;\r\n\r\n(vii)\tThe owner of also has around 13 other domains featuring famous marks such as , and . Further, the official whois e-mail of the domain is linked to around 559 domains including others with famous brands such as , and . These similarities in the naming style using famous fashion brands and geographic terms with the addition of an “s” for other registrations associated with both domains are clearly beyond mere coincidence, and therefore also support a finding that the Disputed domain names are under common control; and \r\n\r\n(viii)\tBoth domains are in the English language, and roman script\r\n\r\nComplainants have trade mark registrations in several countries for the marks HUGO BOSS, alone or in combination with other words or device elements. Complainant 1 is the owner of a substantial number of registrations for the trademark HUGO BOSS worldwide, the Complaint 2 is the registrant of numerous domain names incorporating HUGO BOSS trademarks, including a number of domain names under generic Top-Level Domains (\"gTLD\") and country-code Top-Level Domains (\"ccTLD\"), for example, (created on April 24, 1997), (created on June 14, 2004) and hugoboss.us (created on April 19, 2002). \r\n\r\nThe Complainants states that in past disputes under the Policy panels held that the HUGO BOSS trademark was a well-known mark.\r\n\r\ni) THE DOMAIN NAMES ARE CONFUSINGLY SIMILAR\r\n\r\nThe Complainants state that both Disputed domain names entirely incorporate Complainants’ well-known, registered trademark HUGO BOSS with merely the addition of the highly relevant phrases “outlets” and “top suits”. The addition of the generic Top-Level Domains (gTLD) “.com” does not in the view of the Complainants add any distinctiveness to the Disputed domain names. Furthermore, there have been many domain disputes involving a trademark and the words “outlet” and or “sale”, where the panel has found such terms do not create distinctiveness. \r\nThe incorporation of the HUGO BOSS trademark into the Disputed domain names creates the impression that Respondents are somehow affiliated with Complainants, and Respondents are somehow doing business using Complainants` trademark. The top-level suffix in the Disputed domain names (“.com”) is to be disregarded under the confusing similarity test”. \r\n\r\nComplainants have not found that Respondents are commonly known by the Domain Names. The WHOIS information “Charles Carranza” and “William Tillery” is the only evidence in the WHOIS record, which relates Respondents to the Disputed domain names. Respondents have not by virtue of the content of the website, nor by its use of the Disputed domain names shown that they will be used in connection with a bona fide offering of goods or services. The Respondents could have easily perform a similar search before registering the Disputed domain names and would have quickly learnt that the trademarks are owned by Complainants and that the Complainants have been using their trademarks extensively in the United States and around the world.\r\n\r\nThere is also, in the view of the Complainants, no evidence that Respondent has a history of using or preparing to use the Disputed domain names in connection with a bona fide offering of goods and services. \r\n\r\nAt the time of filing this complaint, Respondents were using the Disputed domain names to attract internet users to its websites where Respondents states that it is “HUGO BOSS” including featuring a HUGO BOSS logotype prominently on the top left-hand side of the page. Respondents are not authorized to use the HUGO BOSS trademarks, nor is there any relationship between Complainants and Respondents. \r\n\r\nMoreover, the use of the word HUGO BOSS (i) in the Disputed domain names and (ii) also on multiple occasions in the website text further created the impression that there is some official or authorized link with Complainants. As noted previously, the trademark HUGO BOSS is a well-known trademark around the world and given the references to this mark on the website and unauthorised use of a variation of the logotype, it is clear that Respondents know about it’s existence. \r\n\r\nIn addition, the websites associated with the Disputed domain names invite visitors to contact Respondents via the “Contact Us” form accessible on the Contact Us pages. Respondents’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use pursuant to Policy.\r\n\r\nThe use of a trademark as a domain name by an authorized or non-authorized third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy if the following conditions are satisfied:\r\n•\tthe respondent must actually be offering the goods or services at issue;\r\n•\tthe respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;\r\n•\tthe site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;\r\n•\tthe respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.\r\n\r\nThese conditions are in the view of the Complainats for the following reasons not satisfied : \r\n\r\nFirstly, Respondents are unlikely to be offering the Complainants’ products or services through the Disputed domain names, but rather appears to be offering similar products and possible fakes and counterfeits and claims to be a discount outlet, offering up 50% or more discounts;\r\n\r\nSecondly, Respondents do not publish an adequate disclaimer on the challenged pages. On the websites connected to Disputed domain names there is no statement disclaiming a relationship or association with Complainants but rather there are merely the statements “Copyright © 2018 hugo-bossoutlets.com. Powered by hugo-bossoutlets.com” and “Copyright © 2018 tophugobosssuits.com. Powered by tophugobosssuits.com”. Clearly such statements would only reinforce the impression that these are sites authorised by the Complainants;\r\n\r\nThirdly, Respondents are depriving the Complainants of reflecting their own mark in the Disputed domain names; and\r\n\r\nFinally, Respondents present themselves as the trademark owner by using Complainants‘ HUGO BOSS trademark (word mark and logotype) on many occasions throughout the websites.\r\n\r\nRespondents's use of the Disputed domain names creates an overall impression that they are the Complainants‘. In the present case, Respondents do not meet all the Oki Data criteria. It is in the view of the Complainants undeniable that Respondents were aware of Complainants’s marks prior to the acquisition of the Disputes domain names and establishment of Respondents’s websites. Respondents have made no claims to either having any relevant prior rights of its own, or to having become commonly known by the Disputed domain names. Clearly, Respondents are not known by the Disputed domain names, nor do Respondents claim to have made legitimate, non-commercial use of the Disputed domain names.\r\n\r\nRespondents have been granted several opportunities to present some compelling arguments that it has rights in the Disputed domain names but have failed to do so. This behavior coupled with the use of the domain names cannot be considered as legitimate use of the Disputed domain names. \r\n\r\nThe Complainants state that the Disputed domain names were registered in bad faith, because Complainants’ numerous trademark registrations predate the registration of the Disputed domain names and Respondents have never been authorized by Complainants to register the Disputed domain names. Moreover, the active business presence, growth and success of Complainants worldwide in recent years shows that it inconcievable that Respondents were not aware of the unlawful registration of the Disputed domain names. \r\n\r\nThe Complainants tried to contact Respondents via the data centre Sayfa.net on July 20, 2017 through a cease and desist letter, sent to the official e-mail address provided. However no answer was received. This communication was simply disregarded. This is bad faith behaviour in Complainants view. \r\n\r\nThe Complainants have the view that Respondents tried to mislead Internet users and consumers, for commercial gain, into thinking that the website at the Disputed domain name is, in some way or another, connected to, sponsored by or affiliated with the Complainants and their business. \r\n\r\nFurthermore, the fact that the Disputed domain names include the entire trademarks of the Complainants is a further factor supporting a conclusion of bad faith. \r\n\r\nRespondents were taking advantage of the HUGO BOSS trademark by creating a likelihood of confusion with the Complainants’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s products, services, websites or location. \r\n\r\nFrom the Complainants’s point of view, Respondent intentionally chose the Disputed domain names based on its registered and well-known trademark in order to generate more traffic to its own business. Nowhere do Respondents disclaim an association between itself and Complainants. The Disputed domain names are currently connected to a webside what appears to be an online shop, selling fashion clothing and accessories, consequently, Respondents are using the Disputed domain names to intentionally attempt to attract, for commercial gain, internet users to the website, by creating a likelihood of confusion with Complainants’s trademarks as to the source, sponsorship, affiliation or endorsement of its website. \r\n\r\nFinally, the Complainants state, that Complainants’ trademark registrations predate Respondents’s domain names registrations. ", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Disputed domain names.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\n", "rights": "The Complainants have, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainants have, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "The Complainants have, 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).", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "Jan Christian Schnedler, LL.M." ], "date_of_panel_decision": "2018-04-05 00:00:00", "informal_english_translation": "Complainants have trade mark registrations in several countries for the marks HUGO BOSS, alone or in combination with other words or device elements. The First Complainant, Hugo Boss Trademark Management GmbH & Co. KG, is the owner of a number of registrations for the trademark HUGO BOSS worldwide including the following:\r\n\r\nJurisdiction: European Union\r\nTrademark No.: 000049254\r\nRegistration date: March 26, 2008\r\n\r\nJurisdiction: European Union\r\nTrademark No.: 006645204\r\nRegistration date: November 26, 2012\r\n\r\nJurisdiction: International\r\nTrademark No.: 430400\r\nRegistration date: June 3, 1977\r\n\r\nJurisdiction: International\r\nTrademark No.: 513257\r\nRegistration date: April 10, 1987\r\n\r\nJurisdiction: International\r\nTrademark No.: 637658\r\nRegistration date: May 31, 1995\r\n\r\nJurisdiction: China\r\nTrademark No.: 9277541\r\nRegistration date: April 28, 2012\r\n\r\nJurisdiction: China\r\nTrademark No.: 1960721\r\nRegistration date: September 14, 2002\r\n\r\nJurisdiction: China\r\nTrademark No.: 949338\r\nRegistration date: February 21, 1997\r\n\r\nJurisdiction: China\r\nTrademark No.: 253481\r\nRegistration date: June 30, 1986\r\n\r\nJurisdiction: Hong Kong China\r\nTrademark No.: 1991B0042\r\nRegistration date: January 11, 1991\r\n\r\nJurisdiction: United States\r\nTrademark No.: 73665342\r\nRegistration date: June 8, 1987\r\n\r\nJurisdiction: United States\r\nTrademark No.: 75367506\r\nRegistration date: October 3, 1997\r\n\r\nThe Second Complainant, Hugo Boss AG, is the registrant of numerous domain names incorporating HUGO BOSS trademarks, including a number of domain names under generic Top-Level Domains (\"gTLD\") and country-code Top-Level Domains (\"ccTLD\"), for example, (created on April 24, 1997), (created on June 14, 2004) and hugoboss.us (created on April 19, 2002). ", "decision_domains": { "HUGO-BOSSOUTLETS.COM ": "TRANSFERRED", "TOPHUGOBOSSSUITS.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }