The Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America ("United States") represented by Ehrner & Delmar Patentbyrå AB, Sweden.
The Respondent is Puia Shamsossadati, Golden Concept AB of Malmö, Sweden. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") in Swedish on September 30, 2015. On September 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2015, 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, and stating that English is the language of the Registration Agreement for the disputed domain name. The Center sent an email communication to the Complainant on October 1, 2015, requesting the Complainant to provide evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in Swedish; or submit the Complaint translated into English; or submit a request for Swedish to be the language of the administrative proceeding. The Complainant filed an amended Complaint in English on October 2, 2015.
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 October 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2015. The Respondent sent an informal communication to the Center on October 13, 2015. The Respondent did not submit any formal response.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on November 11, 2015. 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
The Complainant publishes a world-famous fashion and beauty magazine under the trademark VOGUE.
"VOGUE" is one of the world's oldest fashion magazines still being printed, founded in the United States, in 1892.
Exhibit 2 to the Complaint shows the Complainant's Community Trade Mark registration for VOGUE, registered on May 28, 2014.
The Respondent registered the disputed domain name on August 21, 2015.
The Panel accessed the disputed domain name on November 18, 2015, which resolved to a parking page displaying a message stating that " is hosted by O". 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name is identical to the Complainant's previous Community Trade Mark registration No. 183756, VOGUE, in classes 9, 16, 25 and 41. The application for this mark was submitted on April 1, 1996 and registration took place on May 28, 2014. The mark is primarily used in connection with the magazine "VOGUE". The Complainant's trademark and the disputed domain name are identical, apart from the addition of the new generic Top-Level Domain ("gTLD") ".international", which is not to be included or given any relevance in the similarity evaluation.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is not being used by the Respondent. The Respondent sells exclusive mobile telephone collections under a different brand and has not indicated any justification to use the VOGUE trademark. Therefore, the Respondent has no legitimate interest in respect of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. VOGUE is a world wide famous trademark, especially in connection with fashion and beauty magazines. The fashion magazine "VOGUE" is available in practically all parts of the world. The Respondent sells exclusive collections of mobile phones, activity clearly connected to the exclusiveness that the fashion magazine "VOGUE" communicates. The Complainant contacted the Respondent by email in September 2015, requesting the voluntarily assignment of the disputed domain name. The Respondent answered demanding a monetary compensation of EUR 5,000, not even explaining how it reached this amount. Therefore, it is clear that the disputed domain name was only registered in order to be offered for sale to the rightful owner of the trademark VOGUE, for a price that widely exceeds the cost that the Respondent has paid to obtain it. B. Respondent
The Respondent did not formally reply to the Complainant's contentions, but just requested the proceedings to be held in Swedish. 6. Language of the Proceedings
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
According to information received from the concerned registrar, the language of the registration agreement for the disputed domain name is English.
Therefore, the Panel determines that English is the language of the present proceeding. 7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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. A. Identical or Confusingly Similar
The Panel has no doubt that "vogue" is a term directly connected with the Complainant's activities as a fashion magazine publisher.
Exhibit 2 to the Complaint show a trademark registrations for VOGUE obtained by the Complainant within the European Community.
The trademark VOGUE is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant's trademark only by the addition of the new gTLD denominator ".international".
It is well established that the addition of a gTLD extension (such as ".international" in this case) is generally irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark. Specially when the new gTLD represents a descriptive or geographical addition to the core and distinctive part of the domain name, not altering its underlying meaning.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's failure to respond to the Complaint in any substantive way and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent 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.
When the disputed domain name was registered by the Respondent (in August 2015) the trademark VOGUE was already well known worldwide and directly connected to the Complainant's fashion magazines.
The disputed domain name encompasses the trademark VOGUE, together with the gTLD ".international".
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant's trademark, as well as that the adoption of the expression "vogue" together with the gTLD extension ".international" could be a mere coincidence.
Actually, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant's trademark;
(ii) potentially obtains revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.
It is true that presently the disputed domain name does not resolve to any active webpage.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005.
Furthermore, when contacted by the Complainant, the Respondent conditioned the transfer of the disputed domain name to the payment of valuable consideration, in excess of documented out-of-pocket costs directly related to the disputed domain name.
The passive and non-collaborative posture of the Respondent, (a) not presently using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third-party, well-known trademark together with the gTLD ".international", certainly cannot be considered to be a bona fide use for the benefit of the Respondent in this Panel's opinion.
Such circumstances, including (d) the lack of any plausible interpretation for the registration of the disputed domain name by the Respondent, as well as (e) the request of an amount in excess of documented out-of-pocket costs directly related to the disputed domain name registration, are enough in this Panel's view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy. 8. 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.
Rodrigo Azevedo
Sole Panelist
Date: November 27, 2015
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