Hugo Bosca Company, Inc. v Web Commerce Communications Limited,; Client Care

WIPO Case No. D2024-0613

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hugo Bosca Company, Inc. v. Web Commerce Communications Limited,
Client Care

Case No. D2024-0613

1. The Parties

The Complainant is Hugo Bosca Company, Inc., United States of America (“United States” or “US”), represented by Ice Miller LLP, United States.

The Respondent is Web Commerce Communications Limited, Client Care, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <boscacanada.com> is registered with Alibaba.com Singapore E-Commerce

Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2024.
On February 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On February 19, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (UNKNOWN) and contact information in the Complaint. The
Center sent an email communication to the Complainant on February 20, 2024, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on February 21, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2024.

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The Center appointed Federica Togo as the sole panelist in this matter on March 25, 2024. The Panel finds
that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

It results from the Complainant’s undisputed allegations that for more than half a century, the Complainant has produced, manufactured, bought, sold and otherwise dealt in the business of leather, leather goods and services to millions of consumers worldwide under the BOSCA brand name.

The Complainant is the registered owner of many trademarks for BOSCA, e.g., US Trademark Registration
No.1,243,395 BOSCA registered on June 28, 1983, for goods in classes 6, 9, 16, 18, 21, 25 and 34.

The Complainant uses the domain name <bosca.com> for its website through which it provides goods and services to consumers, including leather goods.

The disputed domain name <boscacanada.com> was registered on September 11, 2023.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name
resolved to a website allegedly selling the Complainant’s products and reproducing without authorization the

Complainant’s trademark and logo.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the designation (“canada”), which is a market that the Complainant reaches.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the disputed domain name is currently used to perpetrate a fraud and/or other illegitimate schemes by leading consumers to believe they are obtaining the

Complainant’s services at the disputed domain name, when they actually are not. The Respondent’s site copies or “mirrors” the Complainant’s site to trick consumers into thinking they are connecting to the authentic site. Moreover, the Complainant has never licensed nor authorized the Respondent to use the BOSCA marks or name, or any of the Complainant’s other trademarks, or to register any domain name incorporating the BOSCA marks or name.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent registered and uses, the disputed domain name with the clear intent to trade off the Complainant’s goodwill and deceive consumers into visiting the website at the

disputed domain name. The website operated under the disputed domain name is clearly intended to
impersonate the Complainant and its BOSCA brand and products. In other words, the Respondent
registered and uses the disputed domain name to intentionally attract Internet uses for commercial gain by
creating a likelihood of confusion with the Complainant’s BOSCA marks. The disputed domain name
prominently displays the Complainant’s registered trademarks and logos and offers for sale identical and/or
similar goods, thereby giving the false impression that they are operated by the Complainant, or a company
affiliated to the Complainant, or an authorized reseller or a partner of the Complainant, all of which are false.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “canada”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered trademark and a geographic term (“Canada”). The nature of this disputed domain name carries a risk of implied affiliation: in fact, certain geographic terms (e.g., <trademark-usa.com>, or <trademark.nyc>) are seen as tending to suggest sponsorship or endorsement by the trademark owner, see WIPO Overview 3.0 at section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). In the present case, the Panel notes that it results from the Complainant’s documented allegations that the disputed domain name resolved to a website displaying the Complainant’s trademark and logo, and purportedly offering for sale the Complainant’s products. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark when it registered the disputed domain name.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

On this regard, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith:

(i) the nature of the disputed domain name (incorporating the Complainant’s mark plus the addition of a

geographical term);

(ii) the content of the website to which the disputed domain name direct, displaying the Complainant’s

trademark, logo, and purportedly offering for sale the Complainant’s products;

(iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of

the disputed domain name.

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <boscacanada.com> be transferred to the Complainant.

/Federica Togo/
Federica Togo
Sole Panelist
Date: April 8, 2024