The Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented internally.
The Respondent is Jennifer R, Mexico. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 November 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 19, 2020, the Center received an informal email communication from the Respondent. On November 20, 2020, the Center sent an email communication to the Parties informing them that they may wish to explore possible settlement options. The Complainant filed two amended Complaints on November 23, 2020. On November 24, 2020, the Center received a second informal email communication from the Respondent. 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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. Apart from its email communications dated November 19 and 24, 2020, the Respondent did not submit a formal Response. Accordingly, on January 9, 2021 the Center notified the Parties that it would proceed to Panel appointment. The Center appointed Assen Alexiev as the sole panelist in this matter on February 3, 2021. 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 an international magazine publisher, which publishes the magazines Vogue, Glamour, The New Yorker, Self, Vanity Fair, and GQ through its division Condé Nast. These magazines have an Internet presence and the company operates several websites that incorporate content from many of its magazines. The Complainant has subsidiaries in various countries that contain the words “Conde Nast” in their name. The Complainant owns the following trademark registrations for the sign CONDE NAST (the “CONDE NAST trademark”): - the European Union trademark CONDÉ NAST, with registration No. 002652022, registered on April 7, 2004 for goods and services in International Classes 3, 9, 14, 16, 18, 25, 35, 36, 38, 39, 40, 41, 42, 43, and 44; and - the United States trademark CONDE NAST, with registration No. 4455621, registered on December 24, 2013 for services in International Classes 38, 41, and 42. The Complainant is also the owner of the domain name The disputed domain name was registered on August 21, 2020. It currently resolves to a landing webpage of the Registrar that contains pay-per-click links to third party websites. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name is confusingly similar to the CONDE NAST trademark, because it incorporates the trademark with the addition of the word “communications”. According to the Complainant, the disputed domain name causes consumer confusion because it creates the impression that it is associated with the Complainant. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant never granted the Respondent the right to use or register the CONDE NAST trademark in connection with a domain name registration or for a bona fide offering of goods and services. The Complainant contends that the disputed domain name was registered and is being used in bad faith. It submits that the Respondent has registered the disputed domain name to trade on the Complainant’s reputation, and has aimed to obtain financial gain by deceiving people as to its identity and affiliation with the Complainant. The Complainant points out that the Respondent has used the email address associated with the disputed domain name to fraudulently represent itself as the Chief Communications Officer of the Complainant and, using the names of real employees of the Complainant, to contact various individuals by email and to ask them for free tickets and accommodations under false pretenses that it is an employee of the Complainant. According to the Complainant, anyone contacted by the Respondent via this email address, created with the bad faith intention of posing as an employee of Condé Nast, is very likely to assume that it is associated with the Complainant. B. Respondent The Respondent claims that the registration of the disputed domain name has been made without its knowledge or authorization by a third party using the Respondent’s identity. It maintains that its identity was stolen and used for the registration of the disputed domain name, and denies to have had any financial gain from the registration of the disputed domain name. The Respondent agrees than the disputed domain name must be transferred or cancelled. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (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 Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar The Complainant has provided information about its registrations of the CONDE NAST trademark and has established its trademark rights for the purposes of the Policy. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name. The relevant part of the disputed domain name is therefore the sequence “communicationscondenast”, in which the elements “communications”, “conde” and “nast” can easily be distinguished. The first of these elements is a dictionary word, while the second and third together represent the CONDE NAST trademark, which is easily recognizable in the disputed domain name. As discussed in section 1.7 of the WIPO Overview 3.0, 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. Therefore, the Panel finds that the disputed domain name is confusingly similar to the CONDE NAST trademark in which the Complainant has rights. B. Rights or Legitimate Interests 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. See section 2.1 of the WIPO Overview 3.0. The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, as it was not authorized by the Complainant to use its trademarks, and is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent is using the disputed domain name to set up an email address that was used to send fraudulent email messages pretending to be a senior representative of the Complainant in an attempt to receive financial gain. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent does not deny any of the statements of the Complainant, but maintains that it was a victim of identity theft. However, the email address provided to the Registrar is the same as the one used by the Respondent to send its communications to the Center. This circumstance does not support the Respondent’s allegation to have been a victim of identity theft. In any case, there is no evidence in the case file to rebut the prima facie case made by the Complainant. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel. The disputed domain name is confusingly similar to the Complainant’s CONDE NAST trademark, which was registered long before the registration of the disputed domain name. The Respondent does not deny the statements of the Complainant that the disputed domain name was used to set up an email account with the disputed domain name and distribute emails from this account to third parties pretending that their author is a senior official of the Complainant for financial gain. As discussed above, the Respondent denies any involvement in the registration and use of the disputed domain name, but nonetheless, the confusingly similar disputed domain name was registered many years after the registration of the Complainant’s widely-known trademarks, and the Complainant has provided evidence of its use for the sending of fraudulent email communications. In view of the above, the Panel accepts as more likely than not that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting its CONDE NAST trademark, and that by using the disputed domain name to set up an email account that was later used to distribute email messages to third parties pretending that their author is a senior official of the Complainant, the Respondent has intentionally attempted for commercial gain to mislead Internet users that it is related to the Complainant. Therefore, the Panel finds that the disputed domain name has been registered and 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 Assen Alexiev
Sole Panelist
Date: February 17, 2021
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