WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Pablo Palermao
Case No. D2008-0026
1. The Parties
Complainant is Advance Magazine Publishers Inc., d/b/a Cond� Naste Publications, New York, New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
Respondents are Moniker Privacy Services, Pompano Beach, Florida, United States of America and Pablo Palermao, San Isidro, Peru.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed (naming as Respondent both “Moniker Privacy Services” and “Pablo Palermao”) with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2008. On January 8, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 9, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that “Pablo Palermao” is listed as the registrant and providing the contact details. This information was also reflected in the WhoIs data for the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2008.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 12, 2008. 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.
The Panel has noted Complainant’s request (in footnote 1 of the Complaint) for the Panel to recognize both “Moniker Privacy Services” and “Pablo Palermao” as Respondent’s for purposes of “fully understanding the chain of events”. The Panel has noted both entities above in the Procedural History. Moreover, as the Registrar has timely disclosed “Pablo Palermao” as the underlying registrant and as this information has been reflected in the WhoIs, and as “Moniker Privacy Services” is a known privacy provider, the Panel finds it more convenient to refer to Respondent solely as “Pablo Palermao”, but all references herein to “Respondent” shall, where applicable, include “Moniker Privacy Services”. See, e.g., QVC Inc. and ER Marks Inc. v. WhoisGuard,WIPO Case No. D2007-1872; Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Services LLC,WIPO Case No. D2007-0524; and, Xtraplus Corporation v. Flawless Computers,WIPO Case No. D2007-0070.
4. Factual Background
Complainant Advance Magazine Publishers Inc., is one of the world’s most successful magazine publishers. Through its unincorporated division, The Cond� Nast Publications Inc., Complainant publishes renowned magazines such as Cond� Nast Traveler, Wired, Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ. Cond� Nast’s magazines have an Internet presence and the company operates, with its affiliates, several popular webistes that incorporate content from many of its magazines. Launched in 1987, Cond� Nast Traveler is one of the world’s major travel and lifestyle magazines, focusing on subjects such as travel, culture, fashion and design. Cond� Nast Traveler reaches an average monthly audience of over 800,000. Complainant owns 4 U.S. trademark registrations for CONDE NAST TRAVELER (and many others worldwide) in connection with magazines and online publications and distribution of information worldwide. Complainant’s trademark registrations and use predate respondent’s registration of the disputed domain name.
5. Parties’ Contentions
A. Complainant
Complainant claims that:
1) The Domain Name is virtually identical to Complainant’s CONDE NAST TRAVELER registered trademark;
2) The domain was obtained to capitalize on the likelihood that consumers will mistype the Complainant’s url by leaving out the “e” after “conde,” resulting in consumers being directed to Respondent’s website;
3) There is no doubt that the registration of the disputed domain name has led or will lead to consumer confusion. Such actual confusion and likelihood of consumer confusion has led prior ICANN arbitration panels and numerous United States federal courts to transfer the ownership, or enjoin the use of domain names that are identical or confusingly similar to a complainant’s trademarks;
4) In view of Complainant’s worldwide reputation consumers who view the disputed domain name will instantly recognize the COND� NAST TRAVELER brand and assume that the domain name links to a website published by Complainant, or that persons who use any e-mail addresses which contain “@” are employees of Complainant;
5) Accordingly, under the ICANN Policy, the disputed domain name is confusingly similar to Complainant’s trademark;
6) Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. Complainant has never granted Respondent the right to use or register the COND� NAST TRAVELER mark, either in connection with a domain name registration or bona fide offerings of goods and services or for any other reason.
7) Prior to its registration of the disputed domain name, Respondent had no legitimate use or right to use the COND� NAST TRAVELER mark.
8) Respondent’s failure to substantively reply to Complainant’s communications about the domain it registered indicates that it cannot demonstrate any legitimate rights or interest in the disputed domain name.
9) Respondent registered the disputed domain name for commercial gain and to trade on Complainant’s goodwill
10) Respondent was clearly aware that consumers who view the disputed domain and e-mail addresses which contain the domain name would expect to be linked to a website associated with Complainant’s magazine and would expect all e-mail addresses utilizing the domain name to be authorized by Cond� Nast. This fact is underscored by the fact that Respondent’s domain name contains travel-related sponsored “pay-per-click” links;
11) Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that the disputed domain name be transferred to the Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the domain name registered by Respondent be transferred to Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which Complainant has rights; and
2) Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it has prior rights in the trademark CONDE NAST TRAVELER in connection with magazines and online publications and distribution of information worldwide.
Complainant claims that the lack of the letter “e” is not enough to avoid the likelihood of confusion. In support of this claim Complainant quotes the following decisions issued by WIPO: Cr�dit Industriel et Commercial v. Domain Drop S.A.,WIPO Case No. D2007-0666 (June 22, 2007) (Finding the domain name confusingly similar to Complainant’s CIC trademark); Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286 (April 26, 2007) (finding the domain name confusingly similar to complainant’s PLAVIX trademark); Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman,WIPO Case No. D2007-0042 (March 16, 2007) (finding the domain name confusingly similar to Complainant’s PLAVIX trademark); Advance Magazine Publishers Inc. v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2007-0026 (March 28, 2007) (finding the domain name confusingly similar to Complainant’s CONDE NAST trademark); Advance Magazine Publishers Inc. v. Red Wagon Films,WIPO Case No. D2006-0893 (November 17, 2006) (finding the domain name confusingly similar to Complainant’s CONDE NAST trademark); Advance Magazine Publishers Inc. and Les Publications Cond� Nast S.A. v. C,WIPO Case No. D2005-0615 (August 9, 2005) (finding the domain name confusingly similar to complainant’s VOGUE trademark).
This Panel agrees with the Complainant’s thesis and the above quoted previous decisions, it therefore finds the disputed domain name confusingly similar to Complainant’s trademark. Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
(iii) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Respondent has no apparent connection or affiliation with Complainant, who has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademark. Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Respondent does not appear to make any legitimate use of the domain name for non-commercial activities. On the contrary, it appears that Respondent’s website “www.” contains travel-related sponsored “pay-per-click” links.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s webiste or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s webiste or location or of a product or service on the holder’s webiste or location.
Accordingly, for a complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
As regards Respondent’s use of the domain name, it appears that Respondent’s website is used to redirect Internet users to a search engine where links to third parties are displayed. By so deflecting users, Respondent has shown bad faith use of the domain name that clearly falls within the example given in article 4(a)(iv) of the Policy.
In addition, the contents which relate to Complainant’s field of activity, set by Respondent on the “www.” website are indicative of Respondent’s knowledge of Complainant’s CONDE NAST TRAVELER trademarks at the time it applied for the disputed domain name. See. E.g., Credit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. La Porte Holdings, Inc.,WIPO Case No. D2004-1110.
In view of the above, considering the notoriety of Complainant’s trademarks and in the absence of contrary evidence, the Panel finds on balance that Respondent had actual knowledge of Complainant’s trademark when it registered the disputed domain name. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that such knowledge of Complainant’s trademarks at the time of the registration of the disputed domain may be considered in drawing an inference of bad faith against Respondent.
Furthermore, this Panel is of the view that the registration of the disputed domain name can be considered a case of typosquatting, a phenomenon that has been held under the Policy to be evidence of bad faith registration of a domain name.
Last but not least, it is the Panel’s opinion that Respondent’s actions in apparently not replying to Complainant’s representative warning letters supports a further inference of bad faith against Respondent.
In view of the above decision, the Panel finds the disputed domain nema was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: February 25, 2008
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