The Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented internally.
The Respondent is Perfect Privacy, LLC, United States / Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 16, 2020, 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 17, 2020 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 17, 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 June 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2020. On July 10, 2020, a third party requested a four calendar day extension for the Response and requested a copy of the Complaint including all exhibits or attachments. On the same day, the Complainant sent an email to the Center consenting to the extension and sending the Complaint and attachments. On July 13, 2020, the Center granted the automatic four calendar day extension for the Response and the due date for the Response was changed to July 18, 2020. On July 14, 2020, the third party wrote to the Center, stating that the Respondent has no connection to the Disputed Domain Name and supports it being awarded to the Complainant. The third party also rescinded its request for an extension of time to respond, stating that the Disputed Domain Name was registered without the knowledge or authorization of the named Respondent and that it was done by a third party using the named Respondent’s identity. On July 15, 2020, the Center acknowledged receipt of the letter and replied that the Panel would address the issue in its decision. On July 20, 2020, the Center notified the parties that it was proceeding to Panel Appointment. The Center appointed Lynda M. Braun as the sole panelist in this matter on July 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 The Complainant is one of the world’s very successful magazine publishers. Through its unincorporated division, Condé Nast, the Complainant publishes such well-known magazines as Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ. Those magazines have an Internet presence and the company operates, with its affiliates, several websites that incorporate content from many of its magazines. The Complainant operates the website “www.condenast.com”, the home of its brand. The Complainant and/or its wholly owned subsidiaries own over 450 active trademark registrations and pending applications for Condé Nast, Conde Nast Traveler and other trademarks that incorporate the “Conde Nast” brand in the United States and worldwide. For example, among many others, the Complainant owns the following trademarks: CONDE NAST, United States Registration No. 4455621, registered on December 24, 2013 in international classes 38, 41 and 42; and CONDE NAST, United States Registration No. 4232868, registered on October 30, 2012 in international class 35 (collectively, the “CONDE NAST Mark”). The Disputed Domain Name was registered on May 20, 2020. The Disputed Domain Name resolves to an inactive landing page with no content. The Respondent used the Disputed Domain Name to create email addresses to contact individuals through social media platforms. The emails were sent by using the Disputed Domain Name from “@condenast-careers.com” (for example, “[...]@condenast-careers.com” and “[...]@condenast-careers.com”), and sought to impersonate the Complainant in an attempt to fraudulently engage unsuspecting job seekers into thinking they were entering into a relationship with the Complainant. In addition, the Respondent sent out fraudulent employment agreements and used photos of the Complainant’s officers in communications to the applicants. Moreover, the applicants were asked for sensitive personal and financial information to be submitted in response to the emails. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - the Disputed Domain Name was registered and is being used in bad faith. - The Disputed Domain Name was registered and is being used in bad faith as part of a phishing scheme in which the Respondent impersonated the Complainant so that the Respondent could obtain sensitive information from unsuspecting job applicants of the Complainant. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii)): (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 respect of the Disputed Domain Name; and (iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the CONDE NAST Mark. It is uncontroverted that the Complainant has established rights in the CONDE NAST Mark based on its years of use as well as its registered trademarks for the CONDE NAST Mark in the United States and many jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the CONDE NAST Mark. The Disputed Domain Name consists of the entirety of the CONDE NAST Mark connected by a hyphen to the dictionary word “careers” and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word or abbreviation. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Specifically, the addition of the dictionary word “careers” does not detract from the distinctiveness of the dominant part of the Disputed Domain Name. See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s CONDE NAST Mark. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its CONDE NAST Mark. Furthermore, the Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a phishing scheme on unwitting Internet users. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. As demonstrated above, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed against the Complainant, a strong indication of bad faith. The Respondent’s phishing scheme to send a fraudulent email purporting to come from the Complainant, seeking sensitive personal and financial information from unsuspecting Internet users evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s CONDE NAST Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. Moreover, “[p]anels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution …. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”. WIPO Overview 3.0, section 3.4. The sending of fraudulent email and perpetrating a phishing scheme is precisely what happened here. Further, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s CONDE NAST Mark for commercial gain. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 Respondent appears to have used the name and contact details of a third party when registering the Disputed Domain Name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
Sole Panelist
Date: August 7, 2020
Full & Egal Universal Law Academy