The Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented by Advance, United States.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 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 received an email from a third party on August 29, 2019. The Center sent an email communication to the Complainant on August 30, 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 September 10, 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 September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed with the panel appointment on October 2, 2019. The Center appointed Antony Gold, Marylee Jenkins, and Gustavo Patricio Giay as panelists in this matter on October 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 publisher of a number of magazines, based in the United States. One of its well-known magazines is the fashion and style magazine “Vogue”, which was launched in 1892. “Vogue” is published in many countries around the world in both print and website editions. The Complainant owns numerous trade marks for VOGUE which have been registered in many jurisdictions. These include the following: - United Kingdom trade mark, registration number 696667 registered on March 9, 1951, for VOGUE, in class 16; - United States trade mark, registration number 1666656 for VOGUE, registered on December 3, 1991, in class 16. The Complainant also owns many domain names, including The disputed domain name was registered on September 16, 2018. It resolves to a website selling men’s and women’s clothing. The website is prominently branded “eravogue”. In smaller font, underneath the brand name, are the words “Fashion & Factory Outlet”. The font used for “eravogue” is identical or very similar to that used by the Complainant for its VOGUE mark, including on its website at “www.vogue.com”. Initially, the letters “era” in “eravogue” were in white or yellow against a black background, with the colours reversed for the “vogue” component, thereby emphasising these separate elements of the Respondent’s trading name. In June 2019, the Complainant’s counsel sent a cease and desist letter to the email contact address shown on the Respondent’ s website objecting to its use of “eravogue”. The Respondent replied saying “Hi, We have changed the font, using a font that is completely different from VOGUE. Our logo is ERAVOGUE not VOGUE”. In fact, the only change implemented was to adjust the form in which ERAVOGUE was presented in order to remove the emphasis on the separate elements of the brand name. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is confusingly similar to its VOGUE trade mark. It draws attention to its trade mark registrations for VOGUE, details of two of these marks having been set out above. In the initial form of the Respondent’s website, the colours used to depict “era” and “vogue” were different and the “vogue” element was identical to the logo used in the Complainant’s “Vogue” magazine. Consumers who view the disputed domain name and the corresponding website will instantly recognize the Complainant’s VOGUE brand and assume that the Respondent is somehow connected with it. The Respondent’s use of “eravogue” in connection with a magazine dedicated to fashion apparel, and the manner in which this mark is displayed and used, underscores the Respondent’s blatant trading on the Complainant’s reputation and exacerbates the likelihood of confusion. The Complainant says that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant never granted the Respondent the right to use or register either “vogue” or “eravogue”, whether in connection with a domain name registration or a bona fide offering of goods and services or for any other reason. Prior to its registration of the disputed domain name, the Respondent had no rights or legitimate interests to use “vogue” or “eravogue”. Moreover, the Respondent has not made any valid claim to use the VOGUE brand. Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-exclusive categories of circumstances which will be evidence of the registration and use of a domain name in bad faith. The circumstance described at paragraph 4(b)(iv) of the Policy is if a respondent is intentionally using a confusingly similar domain name, for commercial gain, to attract Internet users to its website by creating a likelihood of confusion of consumers mistakenly associating such site with the complainant. The facts of this case demonstrate that the Respondent registered the disputed domain name for the purposes of trading on the Complainant’s goodwill and reputation and attracting Internet users to its website, by creating confusion among consumers who will think that the Respondent’s website and the apparel it offers for sale are associated with the Complainant’s VOGUE mark. B. Respondent The Respondent did not file any response to the Complainant’s contentions. However, on August 29, 2019, prior to the formal commencement of proceedings, the Center received an email from a party, whose precise connection with the Respondent is unknown, in the following terms; “Hi, What's the problem with this? Our site is eravogue.com, Not vogue.com, ‘vogue’ means fashion, Because you are VOGUE, so everyone can’t use the word vogue? This is a very ridiculous hegemonic act!! Best regards”. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a formal response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. The relationship between the sender of the email sent to the Center on August 29, 2019, and the Respondent is unknown and the email does not serve as a full response to the Complaint. However, paragraph 10(b) of the Rules obligates the Panel to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The email is accordingly considered below by the Panel. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 Complainant has provided evidence of its many trade marks for VOGUE, including the specific marks in respect of which details are provided above. These establish its rights in the trade mark VOGUE. For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name contains the Complainant’s mark VOGUE in full, preceded by the word “era”. Whether or not this word is perceived by consumers as having any particular meaning does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least 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 purposes of UDRP standing”. Similarly, section 1.8 of the WIPO Overview 3.0 notes that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainant’s VOGUE mark is recognizable within the disputed domain name and the Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. The assessment of the disputed domain name being used in connection with a bona fide offering of goods and services needs to take account of the fact that, in addition to comprising the Complainant’s mark, the word “vogue” can also be used descriptively to refer to current fashion trends. Moreover, the Complainant’s activities, registered marks, and reputation are related primarily to magazine publications and events connected with fashion, rather than the design, manufacture, and sale of garments. To this extent, the assertion made in the email sent to the Center on August 29, 2019, is correct; the Complainant does not have a monopoly on use of the word “vogue’” and use of a domain name which includes the word “vogue” as one of its elements, in connection with an online store selling garments, might conceivably be capable of forming part of a bona fide offering of goods and services. However, whether the Respondent’s website does in fact comprise a bona fide offering depends on its motivation in establishing it and the likely effect of its form and content on Internet users. Whilst the Complainant has provided some screen prints of the Respondent’s website, a panel’s evaluation as to whether a respondent’s website might be considered a bona fide offering of goods and services is often improved by visiting the website itself. The circumstances in which a panel might typically take this course are outlined at section 4.8 of the WIPO Overview 3.0; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”. The Panel has accordingly visited the Respondent’s website and notes that it does not contain any information which might identify the party or parties who are operating the website or even in which country they are located. Similarly, the “Contact Us” section simply states, as the store information: “eravogue.com United States”. No contact information is provided - there is simply an online form and an email address. The lack of any phone number or address contact details or indeed information about the Respondent points to a strong desire on the part of the Respondent to conceal its identity. This is not a feature typically associated with a bona fide website. A number of additional factors also require consideration. First, the original form in which “eravogue” was presented on the Respondent’s website suggests that the Respondent’s intention was to create an association in the minds of Internet users visiting its website that there is a connection between it and the Complainant’s well-known VOGUE publications. Second, the continued close similarities between the font in which “Eravogue” is used on the Respondent’s website and the Complainant’s stylised use of “Vogue” indicate that the Respondent wishes Internet users to continue to make this association. Third, the Respondent’s use of a Privacy service, in the circumstances of this case, provides further support for an inference of a lack of bona fides on the part of the Respondent. Finally, the failure of the Respondent to provide a full response to the assertions made in the Complaint, whilst not conclusive in itself, is suggestive of an inability on its part to be able to provide a credible response to the Complaint and, in particular, to counter the Complainant’s assertion that the form of its website is intended to mislead Internet users in the manner outlined above. Taking all these factors into account the Panel is satisfied that the Respondent’s website does not comprise a bona fide offering of goods and services. The Respondent is also unable to rely on the second and third circumstances set out at paragraph 4(c) of the Policy; there is no evidence that it has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character. As explained at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. The Respondent has failed to satisfy that burden and the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The use to which the Respondent has put the disputed domain name and, in particular, its use of a font which is almost identical to that used by the Complainant in its VOGUE publications, points to an awareness by the Respondent of the Complainant as of the date of registration of the disputed domain name. As explained by the panel in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765; “the registration of a domain name with the knowledge of the complainant’s trade mark registration amounts to bad faith”. See also section 3.1.4 of the WIPO Overview 3.0; “ Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain name falls within this sub-paragraph in that the Respondent’s use of the Complainant’s stylized form of its VOGUE mark is clearly intended to suggest to Internet users that it has some form of association with the Complainant. The Respondent’s sale of fashion garments is a sufficiently proximate activity to the Complainant’s activities in the field of fashion publications that Internet users are likely to assume that the Respondent’s website is operated with the authorization or approval of the Complainant. This belief will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s VOGUE trade mark. In the circumstances of this Complaint, the Respondent’s use of a privacy service to mask the identity of the underlying registrant is a further indication of bad faith; see section 3.6 of the WIPO Overview 3.0. The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith. 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 Antony Gold Marylee Jenkins Gustavo Patricio Giay
Presiding Panelist
Panelist
Panelist
Date: November 20, 2019
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