Arbitration and Mediation

Transcription

1 Arbitration and Mediation PANEL DECISION HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Jesus Navarro Saracibar Case No. DMX The Parties The petitioners are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG (hereinafter the "Respondent"), both residing in Metzingen, Germany, represented by Rossi & Abogados Gonzalez, Mexico. The Contractor is Jesus Navarro Saracibar, residing in Baltimore, Maryland, United States of America, represented pro se. 2. The Domain Name and Registrar Application aims the domain name <hugo.mx>. Said domain name is registered with NIC Mexico. At registrar of that domain name is Neubox Internet SA de CV. 3. Procedural History The Complaint was filed with the Center for Arbitration and Mediation (the "Center") on January 16, On January 19, 2015 the Center transmitted by Mexico a request for registrar verification in connection with the domain name in dispute. On January 19, 2015, NIC Mexico sent to the Centre via , your response confirming that the Respondent is listed as the registrant and providing registration information turn the administrative, technical and billing. The Center verified that the application meets the formal requirements of the Policy dispute concerning domain names for "MX" (the "Policy" or "LDRP"), Regulation Policy Dispute Resolution regarding domain names for "MX" (the "Regulations") and the Supplemental Rules for resolving disputes concerning domain names (the "Supplemental Rules"). In accordance with Article 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on 30 January In accordance with Article 5 of the Regulation, the deadline for answering the request was set for 19 February On 17 February 2015 an American law firm made to the Centre, on behalf of the Contractor, a request to extend the period specified to give answer to the request. The same February 17, 2015, citing time constraints and the need to translate the application and its attachments to English, the law firm in question informed the Centre that the licensee had finally decided to dispense with his services, so they withdrew their request for extension /10

2 On February 18, 2015, the Registrant sent an to the Center to confirm that the Holder would himself who would be responsible for submitting the reply to the request. The Statement of Defense was filed on February 20, On February 20, 2015, the Respondent sent an to the Center stating that the Statement of Defense was presented extemporaneously. On February 20, 2015, the licensee informed the Centre that the Statement of Defense was still lodged in time and experienced technical problems sending attachments to your reply in several parts. The Center appointed Urtiaga Reynaldo Escobar as the only member of the Group of Experts on February 25, 2015, receiving Acceptance and Declaration of Impartiality and Independence, in accordance with Article 9 of Regulation. The expert considers that his appointment follows the rules of procedure. On March 5, 2015, the Respondent submitted to the Centre a statement of objections and arguments. On March 6, 2015, the licensee submitted to the Centre its response to objections and arguments of the Respondent. On March 6, 2015, the Center notified the parties of the proceeding closed decreed by the Expert in terms of the provisions of Article 17 of the Regulation. 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 Pacific region. 1 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. 5. Arguments of the parties A. Respondent In summary, the Respondent argues in its request the following: i. The world's brand BOSS HUGO BOSS comprises collections, BOSS Orange, BOSS Green and HUGO, HUGO being the most distinctive word of all brands; /10

3 ii. The disputed domain name is identical to the registered trademarks of Respondent as the first fully incorporated the word Hugo; iii. The addition of the suffix ".mx" has no impact on the overall impression of the dominant part of the name Hugo and therefore is irrelevant in determining the similarity between the signs in confusion; iv. The Contractor has no legitimate right to the name Hugo that the Respondent is identified; v. The Respondent has not granted the license holder to use their brand or to apply for any domain name that incorporates the same; vi. There is no evidence that the Respondent is making a legitimate noncommercial use of the domain name in dispute since the latter is suspended and is offered for sale to third parties; vii. Nor are there any extenuating circumstances in which the Contractor could legitimately use the disputed domain name knowing the huge number of Respondent registered trademarks and fame; viii. Clearly HUGO BOSS brand is well known and the Contractor should have been aware of the rights of the Respondent when it registered the domain name in dispute; ix. It is shown transcription blog "allowed to do this, the Art Register Domains in Mexico" available " which is attached as Annex 2 of the Application, the Contractor considers himself a " Ciberokupa "that registers domain names registered trademarks and famous as a lifestyle and then sell for $ 500, which has a clear purpose in bad faith; x. A report of the tool "reverse whois lookup" of domaintools.com, which shows that the licensee currently has over 10,000 domain names registered in your name only cctld ".mx" is attached. B. Holder In summary, the Contractor submits in its Statement of Defense as follows: i. At the word "hugo" at least think that the Holder is a clothing brand; ii. The Contractor may not understand that the Respondent has stores in the city of Panama and the domain names <hugoboss.com.pa>, <hugo.com.pa> and <hugoboss.pa> are available, just to cite one example; iii. When a visitor enters the site associated with the domain name <hugo.com> is automatically redirected to the portal <hugoboss.com> as if the Respondent was not interested in that was "Hugo" term to position; iv. "Hugo" is one of the most common names in Mexico where a thousand people with that name between 140 and 175; v. Hugo Sanchez is a public figure clearly identified with the name Hugo in Mexico thanks to his brilliant football career; /10

4 vi. 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; vii. Contrary to the contention of the Respondent, all records branded listed in Annex 5 of the Application relate to the BOSS and HUGO BOSS signs but not the end Hugo; viii. 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; ix. The Contractor does not have to be called Hugo to have a legitimate interest in the disputed domain name as an investor of generic domain names and words in the dictionary; x. As evidenced in Freedom Financial Services, SA de CVSFP v. Telepathy, Inc., WIPO Case No. D , no one can have exclusive rights over a common name like Hugo; xi. The Contractor has registered to date more than 200 domain names that consist of names and surnames popular in Mexico, among them <jesus.mx>, <alma.mx>, <antonio.mx>, <belinda.mx >, <cristian.mx>, <cuauhtemoc.mx>, <gabriela.mx>, etc., as reported in Annex 10 of the Statement of Defense; xii. It is false that the domain name in dispute is suspended since it is online, subjected to a process of statistical evaluation of traffic it receives and does not show any content related to the brand of Respondent; xiii. The Contractor registered the domain name in dispute under the understanding that Hugo is a common name in Mexico on which no one can claim exclusive rights. 6. Discussion and conclusions A. Preliminary Since the policy is a variant of the UDRP dispute resolution regarding domain names ("UDRP" for its acronym in English), the Panel considers it appropriate to refer to decisions of other experts under the UDRP. B. Admissibility of Statement of Defense and supplementary unsolicited briefs of the parties In principle, the Statement of Defense should have been submitted to the Centre on 19 February 2015 at the latest. Neither the policy nor the Regulation nor the Center communication dated January 30, 2015 has a specific time zone (between the Respondent, the Holder or the Centre) to serve as a parameter to determine the expiration of the term for the presentation of the Statement of Defense. Given this uncertainty, the Panel considers it pertinent to refer timezone Holder, it is the latter who had the burden of presenting the Statement of Defense, so you should enjoy the full term schedule resulting from use of domicile registered Whois. The Statement of Defense was received by the Centre at 7:00 pm on February 20, The Contractor proved to have sent the Statement of Defense Center at 00: 59 hours of February 20, 2015, but says that the schedule that appears on your outgoing message corresponds to the East Coast of the United States, while /10

5 he was in an area of central Mexico, so actually submitted its Statement of Defense (no attachments) to the Center 23:59 pm on February 19, So in the worst case scenario, the Statement of Defense was submitted to the Centre deceased hour after the deadline for submission, depending on the place where the Contractor has sent. Article 5 of Regulation establishes among the powers of the panel as follows: A. In all cases, the panel will ensure that the parties are treated with equality and that each party is given a fair opportunity to present his case; B. The panel will ensure that the dispute settlement procedure is carried out with due expedition. At the request of a party or on its own initiative, extend in exceptional cases a period fixed by these Rules or by the Panel. In exercising these powers, the Panel notes the following: i. On February 17, 2015, a firm of US lawyers requested the Centre on behalf of the Contractor and based on Article 5.D Regulation, an extension of two weeks to submit the Statement of Defense. The Centre has granted such extensions in other cases (see Costamex Group, SA de CV (Costamex), Operation and Monitoring Hoteles, SA de CV (OPYSSA) v. Vertical Axis Inc., WIPO Case No. D ) so there is no reason to think he would not have done the same in this issue of the extension request had not been removed. Of the extension in the terms which it was requested have been granted, the holder would have two weeks to submit its Statement of Defense; ii. In the expert opinion, the fact that it has requested the extension referred to in the preceding paragraph and then collected on the day meant that the Contractor is delayed at least during the time that elapsed between the request for extension and withdrawal hours later in the preparation and presentation of the Statement of Defense; iii. The lateness in submitting the Statement of Defense was minimal and therefore did not prejudice the Respondent, especially to be noted that the periods prescribed by the Regulation are not fatal and are subject to discretionary Center expansion or expert, as the case; iv. The Contractor justified the late submission of the annexes to Statement of Defense in technical difficulties, the reason is estimated meritorious by this expert; v. According to the expert, the late submission of Statement of Defense had not intended to delay the proceedings, as evidenced by the contents of that letter and the evidence offered by the Contractor; and vi. The arguments used by the Contractor are suitable for implementing the principle of contradiction in this procedure. In any case, the Panel confirms that its decision would have been the same if having failed to consider the Statement of Defense; In these circumstances, the Panel resolved to admit the Statement of Defense submitted by the Contractor to ensure the effective exercise of their human right of defense in this procedure /10

6 Under this logic and in order to ensure that both parties are treated equally, the Expert solves also support additional written unsolicited parts 2, whose allegations will be taken into account within the following sections, as appropriate, while those arguments regarding the admissibility or otherwise of the Statement of Defense were already considered by the expert when solving this disputed point. C. Requirements merits of the action In accordance with Article 1a) of the Policy, to prevail in this action of transfer, the Respondent has the burden of proving the following three normative assumptions: i. The disputed domain name is identical or confusingly similar with respect to a trademark or registered services, commercial notice registered designation of origin or reservation of rights on which the Complainant has rights; and ii. The Respondent has no rights or legitimate interests in relation to the disputed domain name; and iii. The disputed domain name was registered and used in bad faith. D. Identical or confusingly similarity The main question in this section is reduced to determine by visual comparison or phonetics if the alphanumeric string that makes up the domain name in dispute itself is confused enough with the trademark or registered services, commercial warning registered, name origin or reservation of rights of Respondent to justify the appropriateness of the requested cancellation or transfer, whether linked to the disputed domain name website or not confuse Internet users. View Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D (the use that is given to the domain name into this Web site is irrelevant for the purposes of an analysis of confusion in the context of the UDRP). 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 Contractor submits a purpose of this requirement that "Hugo" is a generic name and consequently the Respondent has no exclusive rights over it. This 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 in material 3. 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 /10

7 For these reasons, the Panel considers exceeded the threshold of Article 1.a.) i.) Of the Policy. E. Rights or Legitimate Interests Section 1.c.) of the Policy provides for the following non exhaustive demonstration hypothesis rights and legitimate interests in a domain name: i. "Before any notice of the dispute, has used the domain name or have made demonstrable preparations to use, or a name corresponding to the domain name in connection with a bona fide offering of goods or services or While legally protected by a reservation of rights; ii. the holder (as an individual, company or other organization) have been commonly known by the domain name, even if you have acquired rights to trademarks or registered service, commercial notice registered designation of origin or reservation of rights; or iii. a legitimate and fair, non commercial use of the domain name, without intent to divert consumers from misleading or to tarnish the reputation of the trademark or registered service, commercial notice registered designation of origin or booking is made picture in question for profit. " 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 <hugo.mx> 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 v. Alberta Hot Rods, WIPO Case No. D (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 v. FreeView Publishing Inc., WIPO Case No. D (the defendant has a legitimate interest in the domain name <donna.com> under the generic term "donna" meaning woman in Italian, in addition to being a common woman name in English); Deanna SpA v. Worldwide Media Inc., WIPO Case No. D (given the null distinctiveness of the name "Deanna" means any person, including the defendant was entitled to register the domain name <deanna.com>); /10

8 Lana Sociedad Cooperativa Ltda. V. Alberta Hot Rods, WIPO Case No. D (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. v. Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D (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 <gloria.com>). The expert agrees with the licensee that Hugo is a name commonly used not only in Mexico but in several countries and languages in April. 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. Not preclude the foregoing that the Respondent asserts in its allegations that its brands HUGO BOSS, HUGO HUGO BOSS and HUGO are well known as no evidence offered to prove his statement. Although the judgment of expert brand HUGO BOSS may well be estimated well known in many countries, from the records in the file does not indicate that the HUGO brand alone has the same status notoriety the brand HUGO BOSS. 5, 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. Elsewhere in its written submissions, the Respondent argues that "even if it is true that the name HUGO is a generic name, it is also true that it has acquired distinctiveness ( secondary meaning ) by brand awareness ". This argument is unfounded. The alleged reputation ascribed to the Respondent your brand HUGO does not result in the latter acquired distinctiveness, but the commercial use of a common term can be significant in bringing that it is associated in the minds of consumers as a trademark or services, and eventually achieve the same estimated notorious without a condition necessary consequence of the other. 6 The secondary meaning or acquired distinctiveness is an institution of US trademark law, specifically its customary law or "common law". At its simplest, the secondary meaning is a new and additional connotation that is associated with a sign devoid of distinctiveness as a proper name, a geographical term or descriptive. 7 However, as this expert was able to ascertain, the Respondent has registered the Hugo trademark in the Patent and Trademark United States, which shows the lack of recognition of secondary meaning (ie trademark) the name Hugo in there /10

9 Because Mexico makes the HUGO mark is registered and therefore the Respondent has exclusive rights of use in the Mexican market with respect to products or services identical or similar to that protects the title of the respective trademark registration, namely Articles Dress. 8 Trademark rights of Respondent does not preclude, however, that the term Hugo is used in its natural context name. Mindful of the above considerations the condition laid down in Article 1.a.) is supplied ii.) Of the Policy. F. Registration on or use of the domain name in bad faith Facing the cumulative nature of the three requirements of Article 1a) of the Policy for the admissibility of the action filed by the Respondent, it is necessary to assess the arguments or evidence offered by the parties with regard to this section. However, the Panel wishes to make some considerations regarding this requirement. On the one hand, as pointed out by the Respondent, the Contractor 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 Contractor 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 your 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. View Shem, LLC v. Solytix, Inc., WIPO Case No. D (passive ownership by itself is insufficient to prove bad faith). 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. Under these conditions, the case of Article 1.a.) iii) of the Policy is not fills. 7. Decision /10

10 For these reasons, this expert rejects the request. Reynaldo Escobar Urtiaga Expert Unique Date: March 18, relations/investment case/hugo boss auf einen blick/ 2 De dated 5 and 6 March 2015, referred to in the last paragraph of paragraph 3 of this decision. 3 In this regard, Article 87 of the Law on Industrial Property in force in Mexico provides: "The industrialists, merchants or service providers may use brands in the industry, commerce or services rendered. However, the right to exclusive use is obtained by registration at the Institute. " 4 According to Wikipedia, Hugo, of Germanic origin, is one of the most popular names stack in Europe, ranking 9th and 8th place in Spain in Belgium in The Respondent has not established to make any publicity about your brand HUGO Mexico or off, or put forward any accounting records of sales of products covered by the HUGO brand or the percentage of those sales in the total income of the Complainant. 6 For Thomas McCarthy is inconsistent state that "the term has acquired a secondary meaning, then then it is a strong brand"; instead it must be said: "The term has acquired a secondary meaning, therefore it is a brand." The next step is to ask yourself how strong is the brand? since acquired distinctiveness and strength of a brand are separate legal concepts. See McCarthy on Trademarks and Unfair Competition, Fourth Edition, Chapter 15. Secondary Meaning. Thomson Reuters, USA. 7 Ibid. 8 Article 16.1 of the TRIPS Agreement ("TRIPS") provides: "The holder of a trademark or registered trade shall have the exclusive right to prevent third parties, without his consent from using in the course of trade identical or similar to goods or services which are identical or similar to those for which the mark is registered, sign where such use would result in a likelihood of confusion /10