WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Vogue XO
Case No. D2002-0797
1. The Parties
Complainant in this proceeding is Advance Magazine Publishers Inc., a corporation organized and existing under the laws of the state of New York, USA, with a principal place of business at Four Times Square, New York, New York 10036, USA. The Complainant is represented in this proceeding by Eric E. Gisolfi, Esq., Sabin Bermant & Gould LLP, Four Times Square, New York, New York 10036, USA.
Respondent in this proceeding is Vogue XO, whose address is 101-1001 W. Broadway, Vancouver, British Columbia V6H 4E4, Canada.
2. The Domain Name and Registrar
The domain name in dispute is .
The registrar for the disputed domain name is N, 6009 Richmond Avenue, Suite 130, Houston, Texas 77057, USA.
3. Procedural History
This administrative proceeding will be resolved in accordance with the provisions of the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on August 26, 2002, by e-mail, and on September 3, 2002, in hard copy. On August 27, 2002, the Center sent a Request for Registrar Verification to the registrar of the disputed domain name, pursuant to which the Center received a verification from that registrar on August 28, 2002, that the Respondent was correctly identified and that the registration was covered by the Policy.
On August 29, 2002, the Center sent Complainant a Deficiency Notification by e-mail requesting the Complainant to send the Complaint in electronic format and to send a hard copy of the Complaint to the Respondent. Complainant sent an Amended Complaint to the Center on September 3, 2002.
On September 10, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On October 1, 2002, the Center sent a Notification of Respondent Default to Respondent by e-mail.
Per Paragraph 3(b)(iv) of the Rules, Complainant requested a three-member Administrative Panel for consideration of this Case. The Panel submitted a Declaration of Impartiality and Independence by October 17, 2002, and the Center proceeded to appoint the Panel on October 18, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
The due date of this Decision is November 1, 2002.
4. Factual Background
Complainant is a United States company that has for many years published, among other periodicals, the magazine "Vogue." Complainant owns registered trademarks for that name in many countries. The magazine has many subscribers worldwide and is well-known internationally in connection with the coverage of fashionable clothes and designs.
Respondent is listed as the registrant of the disputed domain name. The record of registration was created on September 11, 2001. Respondent's website corresponding to the disputed domain name, which provides a disclaimer of association with "Vogue" magazine, offers Internet users a view of fashion advertisements and photographs.
5. The Parties� Contentions (Summarized)
Complainant�s Contentions
- Complainant, an American company, publishes several internationally well-known magazines, including "Vogue," which has been continuously published since 1892. The United States edition of "Vogue" reaches an average monthly audience of over 1,100,000, and "Vogue" is published by Complainant or local licensees in the following countries: England, Spain, Brazil, France, Germany, Italy, Greece, Russia, Korea, Taiwan, Japan and Australia.
- Complainant has registered trademarks for the name, "Vogue", in many countries throughout the world. As a result of its longstanding use, numerous international trademark registrations and international notoriety, "Vogue" is instantly recognized by millions of consumers worldwide and associated with Complainant�s upscale fashion and style publications and online services.
- The website found at the disputed domain name states that it is "The world�s largest private collection and fashion ads award site of top fashion designers photo ads by world top photographers adorning the world�s top celebrities, actors, rock stars, supermodels and royalty." The site also includes the statement "voguexo is not associated with Vogue magazine." Despite the disclaimer, consumers who view the website will instantly recognize the "Vogue" brand and assume that the registration is authorized by or affiliated with Complainant, especially since the materials that Respondent offers are very similar to the materials found in "Vogue" magazine and may even have been published in "Vogue."
- Respondent�s domain name is identical or confusingly similar to Complainant's trademarks.
- Respondent has no rights or legitimate interests in respect of the domain name. Complainant never granted Respondent the right to use or register the "Vogue" mark, either in connection with a domain name registration or a bona fide offering of goods and services or for any other reason.
- Respondent registered and is using the domain name in bad faith. Respondent is clearly using the disputed domain name to trade on the acquired goodwill and reputation of Complainant�s trademark to attract users to Respondent's site for its own commercial gain. Respondent�s voluntary inclusion of the disclaimer noted above is clearly an acknowledgment that Complainant�s "Vogue" mark was intentionally used as the most prominent element of the disputed domain name to divert consumers to the "Voguexo" website for Respondent�s own commercial gain.
Respondent�s Contentions
Since Respondent did not file a response to the Complaint, the Panel is unaware of any contentions Respondent may have.
The Panel notes that the Center forwarded a copy of this Complaint to Respondent by hard copy and e-mail, and sent Respondent a Notification of Respondent Default by e-mail. Those actions by the Center convince the Panel that Respondent has been notified fairly of these proceedings and has not been denied its right to due process.
6. Discussion and Findings
According to the Policy at Paragraphs 4(a)(i) through (iii), Complainant may prevail in this administrative proceeding and be awarded the disputed domain name, , if Complainant can prove the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Panel finds that Complainant owns valid registrations of the trademark, "Vogue", in the United States (e.g., No. 1,666,656, dated December 3, 1991, renewed in October 2001, and No. 103,770, dated April 13, 1915, and renewed on the same date in 1995, as well as similar trademarks in many other countries, including Canada (see Annex D to the Complaint). Complainant's rights in those trademarks pre-date significantly Respondent's registration of the disputed domain name.
The disputed domain name, , is at variance with Complainant's trademark, "Vogue," regarding only the addition of the letters "xo" and the gTLD, ".com". It is now axiomatic in Policy rulings that the inclusion of a gTLD such as ".com" is irrelevant when determining identity or similarity between trademarks and domain names (see for example, Ticketmaster Corporation v. Discover Net, Inc., WIPO D2001-0252 [April 9, 2001] and Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF FA95856 [December 18, 2000]). Moreover, the addition of "xo" behind "vogue" fails to reduce the confusing similarity between the disputed domain name and Complainant's trademark. Undoubtedly, Internet users will be attracted to the disputed domain name by its initial letters, which correspond exactly to that mark. The Panel notes that Respondent's website's disclaimer of association with the "Vogue" mark is fairly conclusive evidence in this regard, otherwise why specifically refer to it alone among all of the other products and services in the world.
In accordance with the foregoing, the Panel has determined that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
No Rights or Legitimate Interests
Because Respondent has submitted no response in this case, it is difficult for the Panel to find that Respondent has rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy specifies three criteria by which Respondent can demonstrate that Respondent possesses such rights or interests. However, no evidence has been presented by Respondent to the Panel to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name in satisfaction of the criterion listed in Paragraph 4(c)(iii). Furthermore, while Respondent's name is given as "Vogue XO," there is nothing in the record to support a showing that Respondent is commonly known by that name in satisfaction of the criterion listed in Paragraph 4(c)(ii). Respondent may have simply used that name solely as the nominal repository for ownership of the identical disputed domain name, as opposed to actually operating under that name.
Although Respondent has submitted no evidence establishing that Respondent is using the disputed domain name in a bona fide offering of goods or services in satisfaction of the criterion listed in Paragraph 4(c)(i), Complainant has furnished the Panel with evidence that Respondent is using the name to offer fashion ads and photographs (see Annex E to the Complaint). This is precisely the field in which Complainant uses its trademark, and prior panels have found that such similar use does not constitute a "bona fide" offering under the Policy. See Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 (April 17, 2002) ("�using the contested domain name�in the exact same field of endeavor as the Complainant�can not and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the contested domain name.").
Also, Complainant has asserted that Respondent has no license or permission from Complainant to use its trademark "Vogue," and the Panel finds no evidence in the record to contradict that assertion.
Although under Paragraph 4(a)(ii) of the Policy Complainant assumes the burden of proving that Respondent has no rights or legitimate interests in the disputed domain name, given the difficulty of excluding all possible rights or interests Respondent may have in a name, the Panel believes it is fully within the mainstream of cases decided under the Policy in considering all of the evidence in the record to determine whether Respondent has legitimate rights or interests. See Do The Hustle, LLC v. Tropic Web, WIPO Case NO. D2000-0624 (August 21, 2000) and Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150, (May 5, 2000). In this case, the evidence as presented does not support a finding that Respondent has legitimate rights or interests in the disputed domain name.
Thus, in view of all the evidence submitted, the Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Bad Faith
As noted above, Complainant has presented the Panel non-contradicted evidence that Respondent is using the disputed domain name to offer products similar to those offered by Complainant under its "Vogue" trademark. The inherent confusion as to the source of Respondent's offering is evidenced by Respondent's unsolicited disclaimer of involvement with Complainant's trademarked product, the natural affiliation an Internet user would assume. The Panel concludes that, by using the disputed domain name in this manner, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating the likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website. This is sufficient evidence for the Panel to base a finding of bad faith registration and use per Paragraph 4(b)(iv) of the Policy.
Thus, the Panel finds Complainant has sustained its burden of proof in showing that the domain name was registered and is being used in bad faith.
7. Decision
The Panel concludes that the disputed domain name, , is confusingly similar to Complainant�s "Vogue" trade and service marks. The Panel has also determined that Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds Respondent registered and is using the disputed domain name in bad faith because Respondent's primary intent in registration and use of the name was to benefit commercially from the likelihood of confusion with Complainant's trademark.
Thus, per Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred from the Respondent, Vogue XO, to the Complainant, Advance Magazine Publishers Inc.
Dennis A. Foster
Presiding Panelist
Michael Albert PanelistDavid H. Bernstein
Panelist
Dated: November 1, 2002
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