The Complainants are Advance Magazine Publishers Inc. of New York, United States of America, and Les Publications Conde Nast S.A. of Paris, France, represented by Sabin Bermant & Gould, LLP, United States of America ("U.S.").
The Respondent is Voguechen of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the "Registar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 21, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 30, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On May 6, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the 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 the Respondent of the Complaint in both English and Chinese, and the proceedings commenced on May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2014.
The Center appointed Jonathan Agmon, David H. Bernstein and C. K. Kwong as panelists in this matter on June 25, 2014. 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
The Complainant is one of the world's most successful magazine publishers. Through its unincorporated division, The Condé Nast Publications, the Complainant publishes several well-known magazines such as Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ.
Vogue was launched in 1892 and is the world's leading fashion and style magazine for women. Its U.S. edition reaches an average monthly audience of over one million readers. Through subsidiaries or local licenses, the Complainant also publishes Vogue magazines in numerous countries, including United Kingdom of Great Britain and Northern Ireland, France, Germany, Spain, Brazil, Italy, Greece, Portugal, Russian Federation, Turkey, Ukraine, Republic of Korea, Japan, Australia, Mexico and China. The Chinese edition of Vogue magazine was launched in 2005 and reaches over 500,000 readers every month.
The Complainant is the owner of multiple trademark registrations for the mark VOGUE around the world. For example: U.S. trademark registration No. 69530, registered on June 16, 1908. The Complainant is also the owner of multiple trademark registrations for VOGUE in China, where the Respondent is based.
Through extensive and prolonged use and advertising around the world, the VOGUE trademark has generated vast good will and has become famous.
The Complainant also developed a formidable presence on the Internet and is the owner of multiple domain names, which contain the name "Vogue", for example: , and .
The disputed domain name was registered on March 20, 2012.
The disputed domain name leads Internet users to a website that offers for sale discounted prom dresses and evening wear under the title "Vogue Prom Dresses" and "Vogue Dresses, Vogue Life!"
The Complainant sent the Respondent a cease and desist letter and an additional follow up letter, to which no response was received. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the VOGUE trademark, in which the Complainant has rights, seeing that it incorporates the VOGUE trademark as a whole, with the additional descriptive words "prom" and "dresses".
The Complainant further argues that the Respondent maintains a Facebook page in which it refers to the products sold on their website as "Vogue Dresses" and states that "Vogue's skilled tailor team and quality control system give you a wonderful detailed dress." The Complainant contends that the Respondent is using the fame of the Complainant's Vogue brand to lend credibility to its business and product which includes low cost dresses and create a false impression that the Respondent is affiliated with the well-known VOGUE brand.
The Complainant further argues that for decades, it has licensed its VOGUE trademark to the McCall Pattern Company for manufacturing dresses and other apparel. The Complainant contends that its Teen Vogue Magazine regularly covers prom season and prom dresses.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that it had not licensed or otherwise permitted the Respondent to use its
VOGUE trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the disputed domain name or has acquired any trademark rights in the name "Vogue".
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant contends that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark and disrupting the Complainant's business.
The Complainant argues that the Respondent registered the disputed domain name with false contact information, which further supports the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language
of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The disputed domain name consists of English words;
c) The disputed domain name resolves to a website which operates in English and targets U.S. customers;
d) The Respondent did not object to the Complainant's request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark VOGUE around the world. For example: U.S. trademark registration No. 69530, registered on June 16, 1908. The Complainant is also the owner of multiple trademark registrations for VOGUE in China, where the Respondent is based.
The disputed domain name differs from the registered VOGUE trademark by the additional descriptive words "prom" and "dresses". The word "prom" is a short form for the word "promenade" and is a semi-formal dance or gathering of high school students. It is popular in the U.S. and increasingly in other countries including in China. The word "dresses" relates to fashion and women's apparel.
The disputed domain name has integrated the Complainant's trademark VOGUE in its entirety, as a dominant element, with additional descriptive words "prom" and "dresses" that do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's well-known VOGUE trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
Also, the addition of the generic Top-Level Domain (gTLD) ".com" to the disputed domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its VOGUE trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant used the VOGUE trademark as early as 1892 and owns a registration for the VOGUE trademark since the year 1908. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark's vast goodwill. The Panel cites the following with approval in the context of a commercial website that is using the disputed domain name to sell products, as contrasted with a noncommercial website that makes only fair uses: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947).
Indeed, in the context of commercial websites that cannot claim fair use, "when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests 'opportunistic' bad faith" . (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it has intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name resolves, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolves.
The disputed domain name leads Internet users to a website that offers for sale discounted prom dresses and evening wear under the title "Vogue Prom Dresses", while displaying the Complainant's VOGUE trademark and the slogan "Vogue Dresses, Vogue Life!" The Complainant provided evidence which shows that the Respondent maintains a Facebook page in which it refers to the products sold on the website at the disputed domain name as "Vogue Dresses" and states that "Vogue's skilled tailor team and quality control system give you a wonderful detailed dress." The Complainant provided evidence which shows it has licensed its VOGUE trademark to The McCall Pattern Company for manufacturing dresses and other apparel, and not to the Respondent. The Complainant also regularly covers prom season and prom through its Teen Vogue Magazine. The Respondent's use of the well-known trademark VOGUE to promote similar or identical goods to the goods being covered by the Complainant and offered by its licensees is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its VOGUE trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".
Furthermore, the disputed domain name is confusingly similar to the Complainant's famous trademark. Previous UDRP panels ruled, in the context of commercial websites as contrasted with noncommercial fair use only websites that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic to a commercial website by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent's lack of response to the cease and desist letters sent by the Complainant and the apparently false contact information provided by the Respondent when registering the disputed domain name, are further indications of the Respondent's bad faith registration and use of the disputed domain name.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant's trademark in the disputed domain name and the confusing similarity between the disputed domain name and the Complainant's mark, the false registration of contact information, and failure to answer the cease and desist letter, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
Jonathan Agmon
Presiding Panelist
David H. Bernstein
Panelist
C. K. Kwong
Panelist
Date: July 9, 2014
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