The Complainant is Advance Magazine Publishers Inc. (d/b/a Conde Nast), United States of America (“United States”), internally represented.
The Respondent is Tutes Craig, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2020, 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 Complainant filed an amended Complaint on April 20, 2020. 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 April 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2020. The Center appointed Timothy D. Casey as the sole panelist in this matter on May 28, 2020. 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 Complainant is a well-known magazine publisher trading under the name Conde Nast that publishes, in print and online, several well-known magazines, including Conde Nast Traveler, Vogue, The New Yorker, Vanity Fair and GQ. Conde Nast Traveler has been published at least since 1988. Complainant has numerous trademark registrations and applications, including the following United States registered trademarks that wholly incorporate CONDE NAST (the “CONDE NAST Mark”): Mark International Class(es) Registration No. Registration Date CONDE NAST 38, 41, 42 4,455,621 December 24, 2013 CONDE NAST 35 4,232,868 October 30, 2012 CONDE NAST TRAVELER 9 4,169,232 July 3, 2012 CONDE NAST LIVING 16 4,740,431 May 19, 2015 CONDE NAST COLLECTION 35 4,358,888 June 25, 2013 CONDE NAST TRAVELER 16 1,568,296 November 28, 1989 Complainant owns the The disputed domain name was registered on February 14, 2020. The disputed domain name has been used for email but is not known to have resolved to a website. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name, which includes the CONDE NAST Mark in its entirety, is confusingly similar to the CONDE NAST Mark, and that the addition of the letter “s” after “nast” is irrelevant in terms of differentiating or distinguishing the disputed domain name from the CONDE NAST Mark. Complainant reports that Respondent sent an email on or about February 17, 2020, using the disputed domain name, to a potential photographer vendor of Complainant. The email impersonated the name of an actual employee of Complainant and requested services from the potential vendor. Complainant contends that Respondent was grooming the potential vendor for a subsequent request for money to be paid to Respondent. Complainant further contends that Respondent has not authorized Respondent to use the CONDE NAST Mark, or to register the disputed domain name, and Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that the disputed domain name is not Respondent’s legal name or nickname. The disputed domain name does not resolve to an active website, and so the Respondent has not made a bona fide offering of goods and services nor a noncommercial or fair use of the CONDE NAST Mark. Complainant contends that Respondent provided or maintained false or misleading contact information when registering the disputed domain name. Complainant believes Respondent is using the disputed domain name primarily to disrupt the business of Complainant by misappropriating services and money from potential vendors by posing as an employee of Complainant’s organization. Complainant further contends that Respondent intentionally registered the disputed domain name for commercial and financial gain to attract Internet users to its email and to trade on Complainant’s goodwill and reputation, namely to fraudulently obtain services and money by deceiving merchants as to its identify and affiliation with Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant’s use of the CONDE NAST Mark as early as 1988, more than 30 years prior to registration of the disputed domain name, and Complainant’s registration of many CONDE NAST Marks since 2012, are more than sufficient to establish that Complainant has trademark rights in the CONDE NAST Mark. Complainant contends that the disputed domain name incorporates the entirety of the CONDE NAST Mark and is confusingly similar to the CONDE NAST Mark. Complainant contends that the addition of the letter “s” after “nast” is insufficient to prevent a finding of confusing similarity to Complainant’s CONDE NAST Mark. The Panel agrees and finds that the disputed domain name is confusingly similar to the CONDE NAST Mark. B. Rights or Legitimate Interests The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not appear to be commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to use or register the disputed domain name. Regardless of what Respondent’s true intention may have been in contacting the potential vendor under false pretenses using the disputed domain name, that impersonating use alone is sufficient to support the Panel’s conclusion that Respondent’s use was not a legitimate noncommercial or fair use and does not constitute a bona fide offering of goods or services. Respondent has not rebutted Complainant’s prima facie case, and has provided no arguments or evidence showing potential rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, comprising the CONDE NAST Mark and an additional letter “s”, carries a risk of implied affiliation with the Complainant as it effectively impersonates or suggests sponsorship or endorsement by the Complainant, and accordingly cannot constitute a fair use in these circumstances. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Panel sees no evidence in the Complaint supporting Complainant’s contention that Respondent provided or maintained false or misleading contact information when registering the disputed domain name. Nevertheless, given i) the timing of Complainant’s first use and first registration of the CONDE NAST Mark and Complainant’s use of the CONDE NAST Mark in association with the noted goods and services, ii) the nature of the disputed domain name, wherein the use of “nasts” in place of “nast” may merely by a type of typo-squatting, iii) the subsequent timing of the registration of the disputed domain name, iv) Complainant’s prior trademark rights in the United States, and v) evidence of Respondent’s subsequent usage, the Panel finds that Respondent clearly knew of the CONDE NAST Mark at the time of registration of the disputed domain name. Respondent’s registration of the disputed domain name was therefore in bad faith. In addition, the Panel finds the subsequent usage of the disputed domain name, sending email communications impersonating an employee of the Complainant, to constitute use in bad faith consistent with paragraph 4(b)(iv) of the Policy. The Panel concludes 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 Timothy D. Casey
Sole Panelist
Date: June 11, 2020
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