Hugo Boss just lost its big to gain control of the domain name Boss.mx
The domain holder Jesus Navarro Saracibar, of Baltimore who seems to own some 10K domain name represented himself in the matter and seemed to do a very good job even citing other UDRP cases in support of his argument.
Bottom line the panel rightly found the term “Hugo” is generic
Here are the highlights:
4. Factual Background
The Respondent is a German fashion house founded in 1924 by luxury Hugo Boss.
The Respondent is listed on the Frankfurt Stock Exchange, has more than 13,000 employees and in fiscal 2014 reported sales of 2.5 billion euros. The Respondent owns 1041 stores where it sells its clothing and accessories (such as scarves, belts, scarves, shawls, hats, handkerchiefs, ties, shoes) high end and in total has 7,100 outlets in Europe , America and the Asia-Pacífico.1 region
The Respondent has registered the marks HUGO BOSS and HUGO in Mexico since 1992 and 1998 respectively, in Class 25 international with respect to “any type of clothing, particularly clothing items for men, women and children” as is credited with copies of Titles corresponding registration. Such records are to have full force and effect.
The disputed domain name was created on April 27, 2013 and remains inactive since.
In summary, the domain holder submits in its Statement of Defense as follows:
When a visitor enters the site associated with the domain name is automatically redirected to the portal as if the Respondent was not interested in that was “Hugo” term to position;
“Hugo” is one of the most common names in Mexico where a thousand people with that name between 140 and 175;
Hugo Sanchez is a public figure clearly identified with the name Hugo in Mexico thanks to his brilliant football career;
There are dozens of generic domain names and territorial extensions that include the term “Hugo” and are available or are offered at low prices in the secondary market;
Hugo is a generic name that does not cause any confusion with the mark HUGO BOSS; Instead, what does cause confusion is that the Respondent used sometimes brand HUGO BOSS, BOSS and sometimes also use the term “Hugo” to identify their brand;
As evidenced in Freedom Financial Services, SA de C.V. S.F.P. c. Telepathy, Inc., WIPO Case No. D2011-1635, no one can have exclusive rights over a common name like Hugo;
The Contractor has registered to date more than 200 domain names that consist of names and surnames popular in Mexico, among them , , , , , , , etc.
The Respondent bases its application in three Mexican trademark registrations that protect brands HUGO BOSS, HUGO HUGO BOSS and HUGO, which were awarded between 15 and 20 years before the disputed domain name was registered.
The domain holder submits a purpose of this requirement that “Hugo” is a generic name and consequently the Respondent has no exclusive rights over it. T
his pretended defense is irrelevant because the Respondent does have the exclusive right to use the name as a trademark HUGO to identify and distinguish the garments sold in the Mexican market under its trademark registration and terms of Mexican law.
However, when comparing the trademark HUGO with the relevant portion of the domain name in dispute, “hugo” it follows that the two signs are indistinguishable except for the size difference in the characters that make two marks, the circumstance is irrelevant for purposes of study requirement because the domain name can not technically comply with capital letters.
In the same vein, the suffix “.mx” is not appropriate to distinguish the disputed domain name of the HUGO brand Respondent, since the nature of the digraph is that of a country code (better known as “ccTLD” for its acronym in English) applicable to a universe of domain names oriented Mexico.
From the above it imposes complete the visual and aural identity of the signs.
For these reasons, the Panel considers exceeded the threshold of Article 1.a.) i.) Of the Policy.
The Respondent contends that the Respondent has no rights or legitimate interests in the disputed domain name because it does not use in any form nor the Respondent obtained permission to incorporate their brand HUGO domain name in dispute.
In other words, the Respondent argues that as he has registered the HUGO brand and the domain name in dispute that mark reproduced without their consent, the Respondent has no rights or legitimate interests under the Policy, as corroborated by the fact that the disputed domain name is inactive.
For its part, the Contractor submits a legitimate interest in the domain name generic derivative of “hugo” which corresponds to a very popular name in Mexico stack. In this sense, the Holder argues that there must be called Hugo to justify a legitimate interest in the domain name in dispute.
Multiple experts have previously validated the thesis Holder in the specific context of proper names, eg:
Etam plc c. Alberta Hot Rods, WIPO Case No. D2000-1654 (as it can not be said that the applicant has exclusive rights over such a short and common as “Tammy”, name the defendant can develop their own use of that name in a different context to that of the complainant’s mark);
Rusconi Editore SpA c. FreeView Publishing Inc., WIPO Case No. D2001-0875 (the defendant has a legitimate interest in the domain name under the generic term “donna” meaning woman in Italian, in addition to being a common woman name in English);
Deanna SpA c. Worldwide Media Inc., WIPO Case No. D2003-0964 (given the null distinctiveness of the name “Deanna” means any person, including the defendant was entitled to register the domain name );
Lana Sociedad Cooperativa Ltda. V. Alberta Hot Rods, WIPO Case No. D2005-1200 (naturally is more difficult for a plaintiff to establish that the Respondent lacks rights and legitimate interests in a domain name that incorporates a common given name as “Lana” as the common names are not distinctive);
Gloria-Werke H. Schulte-Frankenfeld GmbH & Co. c. Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D2002-0056 (Gloria is a common female name. The majority of the panel did not consider this to be one of those cases where the defendant should have conducted a trademark search before to register the domain name ).
The expert agrees with the licensee that Hugo is a name commonly used not only in Mexico but in several countries and in different
Due to the widespread use of Hugo as a common name and the lack of evidence of use of the domain name in dispute that unfair advantage of the reputation of the Promoter or its brand HUGO, the Panel is satisfied that the licensee has legitimate interest within the meaning of the Policy.
In this vein, the expert is not plausible that owners of brands such as LOUIS VUITTON, STEVE MADDEN, JIMMY CHOO or STELLA MCCARTNEY, could claim the status of a non-distinctive reputation for their brands as “Louis” components, “Steve,” “Jimmy” or “Stella”, which are nothing but names in common use, although they were registered as trademarks.
On the one hand, as pointed out by the Respondent, the domain holder has been convicted in previous decisions rendered under the Policy for misappropriating third-party trademarks, including well-known marks, which could well set a pattern violator by the Contractor. However, each case must be decided in the light of their own documented or inferred from the record facts and promotions party.
On the other hand, the Panel notes that the registered holder for the domain name in dispute domicile in Baltimore, Maryland, USA. However, in most previous cases in which it was claimed, the Contractor appears domiciled in Mexico, Federal District, so this expert doubts the veracity of the address specified by the Holder in the case, which could be estimated an indication of bad faith in the registration of the domain name in dispute.
This presumption of falsity is corroborated by the statement of the Contractor himself when he said that when submitting their Statement of Defense was in a time zone of central Mexico, and more reliable way, by the fact that the company international courier hired by the Centre failed to deliver to the Holder the case documents forwarded by the Centre because the address and / or contact details appear in Whois are incorrect or insufficient.
In contrast, the Panel notes that the Respondent failed to demonstrate that the domain holder has used at some point the domain name in dispute to take unfair advantage of the reputation of the Promoter or to disparage or dilute the distinctiveness of the brand HUGO BOSS.
The Respondent asserts that the disputed domain name has been inactive since its registration in bad faith there follows Holder.
However, the mere inactivity of a domain name does not establish bad faith for the purposes of the Policy.
Finally, the Panel notes that this decision does not authorize any way to the Contractor for use in future the disputed domain name as a vehicle to commit behavior of unfair competition or trademark infringement to the detriment of the Complainant.
