The Complainant is Advance Magazine Publishers Inc. of New York, United States of America ("United States"), represented by Taylor Wessing, Germany.
The Respondent is Adam Kolodziej, Ketulepa of Opperdoes, the Kingdom of the Netherlands ("Netherlands"). 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 13, 2018. On April 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 16, 2018, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 24, 2018. 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, Advance Magazine Publishers Inc., is a global media company established in the United States. The Complainant is one of the largest magazine publishers, producing and distributing various international magazines, such as Vogue, The New Yorker, and Vanity Fair, around the world through its subsidiaries and local licensees.
The Complainant is the holder of a multitude of trade- and service mark registrations across various jurisdictions throughout the world for the mark VOGUE, which it uses in connection with its publishing business. The Complainant's trademark portfolio includes, inter alia, the following trade- and service mark registrations:
- VOGUE, word mark registered with the United States Patent and Trademark Office ("USPTO") under No. 3,069,976 on March 21, 2006, in classes 44 and 45.
- VOGUE, word mark registered with the European Union Intellectual Property Office ("EUIPO") under No. 000183756 on May 28, 2014, in classes 9, 16, 25 and 41.
- VOGUE, figurative mark registered with the USPTO under No. 0069530 on June 16, 1908, in class 16.
Various UDRP panels have found that the Complainant's trademarks are well-known throughout the world (see, e.g., Advance Magazine Publishers Inc. v. Buy This Domain,WIPO Case No. D2002-0803; Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668; Advance Magazine Publishers Inc. v. Cenk Babaeren,WIPO Case No. D2010-2238; Advance Magazine Publishers Inc. v. Puia Shamsossadati, Golden Concept AB,WIPO Case No. D2015-1738; Advance Magazine Publishers Inc. v. Perfect Privacy, LLC / Vogue UK / A Domain Privacy / LD Arnott + FMS Smith,WIPO Case No. D2016-0341).
The Disputed Domain Name was registered by the Respondent on July 28, 2017. The Disputed Domain Name currently does not resolve to an active webpage. At the time of filing the Complaint, the Disputed Domain Name appears to have been used to resolve to a website offering for sale heavily discounted apparel products ("UP TO 50% OFF") under the name "DSQUARED2".
On February 21, 2018, the Complainant sent a cease and desist notice to the Respondent via registered mail demanding the Respondent to immediately cease and desist from any further use and apply for the cancellation of the Disputed Domain Name. The Respondent did not reply to this notice. 5. Parties' Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant's trademark and that the Respondent registered and uses the Disputed Domain Name to trade on the Complainant's goodwill and reputation. The Complainant further claims that the Respondent has used the Disputed Domain Name to operate a fraudulent website pretending to offer for sale products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(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.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant's VOGUE mark has been registered and used in connection to its publishing services.
The Disputed Domain Name incorporates the Complainant's VOGUE trademark in its entirety, merely adding the non-distinctive prefix "of".
The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark does not prevent a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word "download" because users typically download complainant's software). The term "of" does not add to the distinctiveness of the Disputed Domain Name as it is a common English word indicating source or origin. It may even strengthen the confusing similarity, as the term could indicate that the products offered for sale on the website previously connected to the Disputed Domain Name were produced, marketed or endorsed by the Complainant.
Additionally, it is well established that the generic top-level suffix ".com" may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is currently not making any use of the Disputed Domain Name in connection with an active website. In addition, at the time of filing the Complaint, the Respondent has apparently used the Disputed Domain Name to resolve to a seemingly fraudulent website offering for sale heavily discounted apparel products. While mere conclusory or unsupported allegations of illegal activity are generally not considered sufficient, even when the Respondent is in default, other circumstantial evidence can support the Complainant's credible claim of illegal respondent activity. In the present case, evidence shows that the goods are offered well below market value and that the service has prompted consumer complaints, which further indicates fraudulent activity (see section 2.13 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). Such a use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its rights in the VOGUE trademark when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant's distinctive and well-known trademark in its entirety with the addition of the two-letter prefix "of", which may strengthen the confusing similarity, as the term could indicate that the products offered for sale on the website previously connected to the Disputed Domain Name were produced, marketed or endorsed by the Complainant.
Considering the distinctive character and the strong reputation of the Complainant's trademark, the Respondent must have had knowledge of the Complainant's rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent's awareness of the Complainant's trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark the use of which by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix ("voip") suggested knowledge of the complainant's rights in the trademarks).
In the instant case, the Respondent is using the Complainant's VOGUE trademark without the Complainant's authorization and without disclosing a relationship with the Complainant. Doing so, consumers are likely misled into believing that the website previously connected to the Disputed Domain Name is operated by the Complainant itself or by a company affiliated to or endorsed by the Complainant. The use of the Complainant's mark is clearly with the intention of attracting Internet users for commercial gain, since the purpose of the website was to convince consumers into buying various kinds of heavily discounted apparel. In this way, consumers would have been easily led to believe that the products originated from or were endorsed by the Complainant's renowned fashion magazine Vogue. The fact that the Disputed Domain Name currently does not resolve to an active webpage does not preclude a finding of bad faith. Additionally, the Respondent can at any time resume the previous bad faith use of the Disputed Domain Name.
Therefore, the Panel finds that, on the balance of probabilities, it is shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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.
Flip Jan Claude Petillion
Sole Panelist
Date: June 1, 2018
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