Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America, represented by Sabin Bermant & Gould, LLP, of United States of America.
Respondent is Arena International Inc. of Woodside, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011, identifying the Respondent as Domains By Proxy, Inc. On February 2, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On February 3, 2011, GoD, Inc. 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 and contact information in the Complaint. The Center sent an email communication to Complainant on February 4, 2011, providing the registrant and contact information disclosed by GoD, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 4, 2011. The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 28, 2011.
The Center appointed Douglas M. Isenberg, David H. Bernstein and Ira S. Sacks as panelists in this matter on March 24, 2011. The Panel finds that it was properly constituted. Each member of 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
Complainant states that it “is one of the world’s most successful magazine publishers”. Complainant further states that its magazine titled “Vogue” was launched in 1892 and is “the world’s major fashion and style magazine for women,” reaching an average monthly audience of more than 1,2 million in the United States plus editions in United Kingdom of Great Britain and Northern Ireland, France, Germany, Spain, Brazil, Italy, Greece, Portugal, Russian Federation, Republic of Korea, Taiwan, Province of China, Japan, Australia, Latin America and China.
Complainant states that it has operated a website using the domain name since 2000, which serves as the “online home of Vogue” magazine, attracting more than 600,000 unique visitors and 7 million page views per month.
Complainant further states that it owns more than 1,000 trademark registrations worldwide for the mark VOGUE in connection with magazines and online publications and distribution of information. In support thereof, Complainant provided a 56-page trademark report identifying such marks as VOGUE, TEEN VOGUE, MEN'S VOGUE and others in numerous jurisdictions. These registrations are referred to hereafter as the “VOGUE Trademarks”.
Complainant states that the Disputed Domain Name is used in connection with “a website selling counterfeit goods,” and Complainant “was originally alerted to [the Disputed Domain Name] from a consumer who ordered merchandise thinking that Vogue magazine was affiliated with the site”. Complainant further states that the Disputed Domain Name “is also the frequent subject of numerous internet user complaint forums,” a statement supported by relevant printouts provided by Complainant.
The Disputed Domain Name was created on March 18, 2006. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
The Disputed Domain Name is identical or confusingly similar to the VOGUE Trademarks because, “[i]n view of Complainant’s worldwide reputation and publication of numerous international editions of Vogue magazine and Vogue websites, consumers who view the disputed domain name and website will instantly recognize the VOGUE brand.”
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “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”; and “[p]rior to its registration of the [Disputed Domain Name], Respondent had no legitimate use or right to use the VOGUE brand.”
The Disputed Domain Name was registered and is being used in bad faith because “Respondent clearly makes unauthorized use of many of the world’s most renowned brands to sell counterfeit products and does so by connecting the world famous Vogue magazine and online brand to its business.” B. Respondent
Respondent did not reply to Complainant’s contentions. 1 In view of Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Boris Johnson v. Belize Domain WhoIs Service Lt., WIPO Case No. D2010-1954. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it appears that Complainant has trademark rights in the VOGUE Trademarks, and Respondent does not dispute the validity of these trademarks. Complainant has provided copies of relevant trademark registration certificates to substantiate some of the cited trademark registrations, and the Panel has independently2 confirmed the validity of numerous VOGUE Trademarks at the website of the United States Patent and Trademark Office, including United States Reg. No.69,530 for VOGUE in stylized form, first used in commerce on December 17, 1892, for use in connection with magazines. In addition, the Panel notes that a number of previous decisions under the Policy have found that Complainant has rights in and to the VOGUE Trademarks, including, most recently, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. HostM INC / Stephen Lee,WIPO Case No. D2010-1355.
As to whether the Disputed Domain Name is identical or confusingly similar to the VOGUE Trademarks, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “buyvogue”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
As a previous panel stated, “when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity.” Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748). In this case, inclusion of the word “buy” does not distinguish the word “vogue” in the Disputed Domain Name from the VOGUE Trademarks given that luxury goods associated with the VOGUE Trademarks are, obviously, something that people “buy.” Previous panels have reached the same conclusion with respect to other domain names that include the word “buy,” including Aktiebolaget Electrolux v. gookob sunshine,WIPO Case No. D2010-2026; F. Hoffmann-La Roche AG v. Onotole Vasermane,WIPO Case No. D2010-2074; and Coach, Inc. v. chen feisheng, chen fei sheng, chen fei, lin jun, yang xiaochun, chen yuxuan, lin xiao fu,WIPO Case No. D2010-2004. Moreover, and in any event, as reflected in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the inclusion of a trademark in the domain name, where the trademark is recognizable within the domain name, is sufficient to satisfy the first element of the Policy. The VOGUE trademark is the dominant, recognizable portion of the Disputed Domain Name.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “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”; and “[p]rior to its registration of the disputed domain name, Respondent had no legitimate use or right to use the VOGUE brand.”
While the Panel would have preferred to see something other than conclusory arguments, the Panel recognizes the difficulty that complainants can have in proving a negative. Thus, under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant does not specify which, if any, of the preceding factors exists with respect to the Disputed Domain Name. However, it appears that Complainant believes bad faith exists pursuant to paragraph 4(b)(iv) given that Complainant says: “Respondent clearly makes unauthorized use of many of the world’s most renowned brands to sell counterfeit products and does so by connecting the world famous Vogue magazine and online brand to its business.” Unfortunately, Complainant’s statement is not supported by an annex to the Complaint showing a printout of the website using the Disputed Domain Name, as is typically provided in a Complaint. The Panel attempted to visit the website at the Disputed Domain Name but found no such site (as of April 4, 2011). Further, the Panel did not identify any relevant website in the Internet Archive’s Wayback Machine, a tool frequently used by panels.3
Nevertheless, Complainant’s statements are not disputed by Respondent, and Complainant has provided communications from consumers that appear to be consistent with these statements. Moreover, in the absence of a Response, Complainant’s factual assertions are accepted as true for purposes of this proceeding. Boris Johnson v. Belize Domain WhoIs Service Lt., WIPO Case No. D2010-1954. Accordingly, this Panel concludes that use of the Disputed Domain Name to offer for sale what appear to be counterfeit products associated with VOGUE Trademarks constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. This is consistent not only with previous decisions under the Policy in general but also with previous decisions relating to the VOGUE Trademarks in particular. See, e.g., Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. HostM INC / Stephen Lee,WIPO Case No. D2010-1355 (“the Panel accepts that use of a well-known trademark to lure customers to a website that promotes counterfeit or fake goods would in most circumstances be considered bad faith use”).
Accordingly, the Panel is satisfied that Complainant has proven the third element 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 Disputed Domain Name be transferred to the Complainant.
Douglas M. Isenberg
Presiding Panelist
David H. Bernstein
Panelist
Ira S. Sacks
Panelist
Dated: April 5, 2011
1 Because Respondent did not submit a Response, the Panel has carefully reviewed the record to ensure that the Center has discharged its obligation to notify Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules. See Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415. On February 7, 2011, the Center sent written notice of the Complaint to the postal address provided by the Registrar; on February 10, 2011, UPS successfully delivered that written notice. On February 7, 2011, the Center also attempted to provide Respondent with notice by email. The Center forwarded a copy of the Complaint, including all annexes, to the e-mail address provided by the Registrar, and to the email address postmaster@. The Center sent these materials to five different email addresses. Although two of the five email addresses did not go through, the Center did not receive any bounce-back or other notice that the other three emails were undelivered. The Panel finds that the Center has employed “reasonably available means calculated to achieve actual notice to Respondent.” Accordingly, the Panel concludes that the Center has discharged its obligation to notify Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules.
2 The consensus view in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (”WIPO Overview 2.0”) provides that “[a] panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision.” Paragraph 4.5.
3 The Wayback Machine has been described as “a reputable source for tracking the history of some content on the Internet.” Pfizer Inc. v. Bharat Gohil,WIPO Case No. D2005-1290.
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