The Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented by Natasa Colovic, United States.
The Respondent is DomainsByP, United States / Pu Wang, China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (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 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 the Complainant on June 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 21, 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 22, 2019.
The Center appointed Pablo A. Palazzi, Marylee Jenkins, and Linda Chang as panelists in this matter on August 22, 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 a magazine publisher. In 1892, the Complainant launched the Vogue magazine.
The Complainant owns various trademark registrations around the word for the term VOGUE, including Japan, among others:
- VOGUE Japan Trademark registration No. 2525108, registered on April 28, 1993;
- VOGUE Japan Trademark registration No. 0655209/20, registered on April 25, 1997; and
- VOGUE Japan Trademark registration No. 0655209/21, registered on August 29, 1997.
The Disputed Domain Name was registered on October 11, 2017.
The Disputed Domain Name is currently inactive. However, the Complainant filed evidence that the Disputed Domain Name redirected to a website in Japanese language. Moreover, the website included the VOGUE trademark in a prominent manner. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows: Identical or confusingly similar
The Complainant states that the Disputed Domain Name is confusingly similar to the Complainant’s VOGUE trademark.
In addition, the Complainant submits the Respondent is using the Disputed Domain Name for selling fashion clothes for women, which is the same as the Complainant has been promoting.
Moreover, the Respondent used a false address and digitally altered photos of a Panasonic warehouse with the “Voguesolo” name replacing Panasonic.
Thus, Internet users will instantly recognize the VOGUE trademark and assume that it is connected with the Complainant. Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests whatsoever with respect to the Disputed Domain Name. In addition, the Complainant never granted the Respondent the right to use or register the VOGUE or Voguesolo trademark.
The Complainant further states that the Respondent didn’t make any valid claim to use the VOGUE trademark. Registration and use in bad faith
The Complainant submits that the Respondent registered and used the Disputed Domain Name for the purpose of trading on the Complainant’s goodwill and reputation and for attracting Internet users to its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name:
“(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar
Based on the evidence submitted, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark VOGUE. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element. Furthermore, the Disputed Domain Name contains the Complainant’s VOGUE trademark in its entirety; the addition of the term “solo” does not change this finding.
Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
“(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the VOGUE trademark.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention.
As such this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered in 2017, thirty nine (39) years after the Complainant obtained its (famous) VOGUE Japan Trademark registration No. 2525108. The fact that the Respondent displayed the Complainant’s VOGUE trademark and logo in the website of the Disputed Domain Name clearly demonstrates that the Respondent was aware of the Complainant’s VOGUE trademark when registering the Disputed Domain Name.
Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its VOGUE trademark.
In addition, the Complainant submitted evidence that the Respondent’s website is used for selling women’s clothes using magazines fronts of the Complainant. Thus, Internet users might have well been under the impression that it is a website created and operated by the Complainant. Moreover, the Respondent used a false address with the inclusion of an altered photo of a Panasonic Warehouse with the “Voguesolo” name replacing the PANASONIC trademark.
The circumstances in the case before this Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and it has intentionally created a likelihood of confusion with the Complainant’s VOGUE trademark and website in order to attract Internet users for its own commercial gain.
Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademark and its website in order to attract Internet users for his own commercial gain, as described by paragraph 4(b)(iv) of the Policy.
The Disputed Domain Name is currently inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
Therefore, taking all circumstances into account and for all above reasons, this Panel concludes that the Respondent has registered and using the Disputed Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the Disputed Domain Name be transferred to the Complainant.
Pablo A. Palazzi
Presiding Panelist
Marylee Jenkins
Panelist
Linda Chang
Panelist
Date: September 6, 2019
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