The Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), internally represented.
The Respondent is Oksana Laksa, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 27, 2019.
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 June 28, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.
The Center appointed Jane Seager, Marylee Jenkins, and Tobias Malte Müller as panelists in this matter on August 23, 2019. 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 an international publishing company, incorporated in New York, United States. Through its subsidiary, Condé Nast, the Complainant publishes various magazines, including Vogue, Glamour, TheNewYorker, Self, VanityFair and GQ. Since its launch in 1892, Vogue has become one of the world’s leading fashion and style magazines for women. In addition to its United States edition, Vogue is published through the Complainant’s subsidiaries in other countries, including but not limited to Australia, Brazil, China, the Czech Republic, France, Germany, Greece, Italy, Japan, Portugal, the Republic of Korea, the Russian Federation, Spain, and the United Kingdom.
For use in connection with its publication of Vogue, the Complainant owns a substantial portfolio of trademarks, registered in jurisdictions throughout the world, including the following:
- United States Trademark Registration No. 103770, VOGUE, registered on April 13, 1915;
- Czech Trademark Registration No. 158005, VOGUE, registered on December 3, 1951; and
- European Union Trade Mark Registration No. 3736097, VOGUE, registered on January 18, 2007.
The Complainant also owns the domain name , from which it operates a website featuring Vogue magazine content and advertising.
The disputed domain name was registered on November 2, 2014. At the time of filing the Complaint, the disputed domain name resolved to a website in Italian and English titled “LOVOGUE” (the “Respondent’s website”) with the following message:
“Welcome to my official website
I am an independent blogger, image consultant and freelance fashion designer of women’s clothing in Prague. I have always felt confident about my personal style – refined and elegant, both timeless and contemporary.. yet carefree.. ‘city style’ […]”
The Respondent’s website contained stylized photographs of the Respondent, including various photos of the Respondent wearing a “LOVOGUE” branded t-shirt, together with articles relating to third-party fashion designers, apparel and fragrances. The header of the Respondent’s website displayed the word “LOVOGUE” in uppercase letters with the element “LO” appearing in red and “VOGUE” appearing in black in a similar typeface to that used by the Complainant on its official website and on the cover of Vogue magazine.
On January 15, 2019, the Complainant sent a cease-and-desist letter to the Respondent, requesting, inter alia, transfer of the disputed domain name. The Respondent did not reply to the Complainant’s letter. On March 22, 2019, the Complainant sent another letter to the Respondent, which also went unanswered. The Complainant also states that it contacted the Respondent by phone, but that the Respondent was unresponsive to the Complainant’s requests.
At the time of this decision, the disputed domain name continues to resolve to a website similar to that which appeared at the disputed domain name immediately prior to the filing of the Complaint; however, most of the content has been removed with only three articles relating to fragrances remaining, dating from 2014 and 2015. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the VOGUE trademark in which it has rights. The Complainant states that the disputed domain name consists of its VOGUE trademark, together with the letters “lo”, which presumably represent the initials of the Respondent. The Complainant asserts that Internet users who view the disputed domain name will instantly recognize the Complainant’s VOGUE trademark and will assume that the disputed domain name is somehow connected to the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent’s website is used for fashion and style content, corresponding to the type of content that the Complainant has been publishing in its magazine for over a century. The Complainant states that it has never granted the Respondent any right to register or use its VOGUE trademark in connection with a domain name registration or otherwise. Accordingly, the Respondent does not make any valid claim to the VOGUE brand.
The Complainant further submits that the disputed domain name was registered and is being used in bad faith. The Complainant argues that in light of the Respondent’s promotion of her website in connection with the luxury and fashion industry, together with the way in which the Complainant’s VOGUE trademark is displayed on the Respondent’s website, it is clear that the Respondent registered the disputed domain name for the purpose of trading on the Complainant’s longstanding history, reputation, and goodwill. The Complainant asserts that the Respondent’s use of the disputed domain name creates a likelihood of confusion, and will lead Internet users to think that the Respondent and her website are associated with the Complainant’s well-known VOGUE brand.
The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to prevail under the Policy, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the VOGUE trademark through its registration and widespread use, the details of which are provided in the factual background section above.
The disputed domain name incorporates the Complainant’s VOGUE trademark, preceded by the letters “lo” under the generic Top-Level Domain (“gTLD”) “.com”. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, in cases where a domain name incorporates the entirety of a trademark, or at least where a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing. The Panel finds the Complainant’s VOGUE mark to be readily recognizable in the disputed domain name. In the present case, the addition of the letters “lo” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. See Advance Magazine Publishers Inc. v. Adam Kolodziej, Ketulepa,WIPO Case No. D2018-0832 (regarding the disputed domain name ) where the panel held 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”.
The gTLD “.com” may be disregarded, as it is viewed as a standard registration requirement; see WIPO Overview 3.0, section 1.11.1.
In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As noted in WIPO Overview 3.0, section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has provided evidence in the form of screen captures showing that prior to filing the Complaint, the disputed domain name resolved to a website that was used to promote the Respondent’s activities as an “independent blogger, image consultant and freelance fashion designer of women’s clothing in Prague”. The Respondent’s website also included articles about third-party fashion brands and fragrances of a similar nature to those included in the Complainant’s Vogue publication and on its website. The Respondent’s website closely resembled the look and feel of material published by the Complainant in both its print media, as well as on its website, particularly in terms of the Respondent’s use of a stark black and white color scheme, as well as the “LOVOGUE” banner in uppercase serif typeface on the Respondent’s website, being essentially identical to the typeface used by the Complainant on its official website and on the cover of Vogue magazine. The Panel notes that the Complainant has not granted any authorization for the Respondent to make use of the Complainant’s VOGUE trademark in the disputed domain name or otherwise. The Panel further notes that there is no clear disclaimer on the Respondent’s website to clarify that the Respondent’s services are not affiliated or otherwise associated with the Complainant. In the circumstances, the Panel finds that by using the disputed domain name in such a manner, the Respondent has sought to create the impression that the Respondent’s website is somehow endorsed by the Complainant, in order to boost the promotion of her activities as a blogger, image consultant and freelance fashion designer. The Panel finds such use of the disputed domain name to be misleading, and does not amount to a bona fide use of the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent’s name as listed on her website and as reflected in the WhoIs information for the disputed domain name is “Laska Oksana”. While it may be inferred that the letters “lo” in the disputed domain name denote the Respondent’s initials, that would not in itself confer any rights on the Respondent to register a disputed domain name containing the Complainant’s trademark for use in connection with a website that seeks to create a false impression of association with the Complainant. No evidence has been put forward indicating that the Respondent has registered any trademarks resembling the disputed domain name. The Panel finds that the Respondent is not commonly known by the disputed domain name, or any name corresponding to the disputed domain name, in accordance with paragraph 4(c)(ii) of the Policy.
The Panel further finds that the Respondent’s use of the disputed domain name, as described above, does not support a finding that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark within the meaning of paragraph 4(c)(iii) of the Policy. The Panel notes that the Respondent’s website does not explicitly advertise specific products for sale, raising the question of whether the Respondent’s website could be construed as a fan site. As noted in WIPO Overview 3.0, section 2.7.1, for purposes of assessing fair use under paragraph 4(c)(iii) of the Policy, a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site. In the present case, the Panel finds that the prominent use of the Complainant’s VOGUE trademark to promote the Respondent’s activities as a blogger, image consultant and freelance fashion designer does not serve to distinguish the Respondent’s website from that of the Complainant. Rather, the Respondent’s use of the Complainant’s VOGUE trademark on her website appears to be commercially motivated, and goes beyond what may be considered noncommercial or fair use for the purposes of the second element of the Policy.
In light of the foregoing, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Noting that the Respondent has not come forward to present any evidence to rebut the Complainant’s prima facie case, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Launched in 1892, the Complainant now has over 125 years’ history as one of the world’s leading fashion and style publications, reaching millions of readers in countries throughout the world. The Complainant’s registration and use of its VOGUE trademark substantially predate the Respondent’s registration of the disputed domain name by over 100 years. The Panel infers from the use of the disputed domain name, as described in detail above, that the Respondent had the Complainant and its trademarks in mind when registering the disputed domain name, and did so, without authorization, in an effort to create a misleading impression of association with the Complainant. The Panel finds that the Respondent registered the disputed domain name in bad faith.
In light of the prominent featuring of the Complainant’s trademark on the Respondent’s website, the Respondent’s use of a stark black and white color scheme similar to that used by the Complainant, and the Respondent’s use of the Complainant’s trademark to promote herself as a blogger, image consultant and freelance fashion designer, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of her website or of a product or service on her website, amounting to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
The Panel further finds the Respondent’s failure to reply to the Complainant’s cease-and-desist letters together with the removal of certain content at her website subsequent to being notified of the present proceeding to be further indicators of bad faith.
For the reasons set out above, the Panel finds that the Complainant has satisfied 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.
Jane Seager
Presiding Panelist
Marylee Jenkins
Panelist
Tobias Malte Müller
Panelist
Date: September 2, 2019
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