On March 29th, 2011, Hugo Boss filed a complaint with the World Intellectual Property Organization (WIPO)’s Arbitration and Mediation Center against a Vietnamese Domain name owner named Luong Dinh Dung. The disputed domain, www.highboss.com, was originally registered on March 17th, 2009 and was found to have incorporated images intended to confuse and mislead visitors of the site.
|Photo by Renjith Krishnan|
Prior to the complaint, the Vietnam Intellectual Property Research Institute (VIPRI) conducted an assessment of the site concluding that the “HIGH BOSS” logo was confusingly similar to the “HUGO BOSS” registered trademark which has full legal recognition in Vietnam.
The administrative panel’s reasons for turning over ownership of the domain to Hugo Boss were threefold.
First, they found that the domain was confusingly similar to Hugo Boss’s registered trademark. The Panel noted that the swapping of the word “High” for Hugo (effectively changing two letters) was of no consequence and that on that basis alone the domain should be turned over.
Second, they found that the respondent had no legitimate interest in the domain. A respondent can refute such a claim by showing:
- - That prior to the commencement of the complaint, that they were or were preparing to use the domain in connection with a “bona fide offering of goods or services”.
- - That the respondent themselves are “commonly known” by the domain.
- - That the respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
-The owner of the infringing domain didn’t even muster an effort to prove any of these elements.
Finally, the Panel found that the owner of the domain registered it in bad faith. In addition to giving merit to the VIPRI’s report, the Panel cited an e-mail written by the owner of the infringing domain which they found to be false and dishonest. The finding of bad faith was primarily based on the negative inference the Panel drew from this less than truthful statement.
They ordered that the domain be transferred to the complainant, Hugo Boss, who clearly shut the site down (currently the message “Bad Request (Invalid Hostname)” comes up if you try to access the domain). A clear cut win for Hugo Boss and lovers of fashion everywhere.