The Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented by Marks & Clerk Law LLP, Canada.
The Respondents are Contact Privacy Inc., Canada / Youssef Nasser, CanadianVogue, and Muna Shoman, Vouge Casting, United States. 2. The Domain Names And Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 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 December 9, 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 Respondents of the Complaint, and the proceedings commenced on December 10, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2020. On December 21, 2020, the Registrar forwarded a communication to the Center from one of the Respondents, which had been sent on December 18, 2020. On January 4, 2021, the Center informed the Parties that it would proceed with the panel appointment process, pursuant to paragraph 6 of the Rules. The Center appointed Evan D. Brown, Christopher J. Pibus, and William R. Towns as panelists in this matter on February 4, 2021. 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 publishes the well-known fashion magazine Vogue, which has borne that mark since 1892. The Complainant owns over 1,000 registrations for the word “VOGUE” and similar variations in connection with magazines and online publications and distribution of information (the “VOGUE marks”). For example, it owns United States Reg. No. 69530, registered on June 16, 1908, and Canadian Reg. No. TMDA42009, registered on August 3, 1927. The disputed domain name The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and, that the disputed domain names were registered and are being used in bad faith. B. Respondents The Respondents did not file any formal reply to the Complainant’s contentions, but only submitted a brief email response to the Registrar containing a general denial of the claims raised in the Complaint, asserting principally that “VOGUE IS WORD THAT YOU DON'T OWN. IT CAN BE A VERB OR A NOUN. iTS LIKE aPPLE, CAN YOU TELL ANYONE TO USE AN APPLE AS A NAME FOR HIS BUSINESS” (typographical errors retained). 6. Discussion and Findings A. Consolidation of Multiple Respondents There are two Respondents and the Complainant requests that they be consolidated into this matter. The Panel finds that consolidation is proper in this case. Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents and provides that where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. The record indicates the disputed domain names and the websites published at them are under common control: - The email address the two Respondents used to register both disputed domain names is the same. - Evidence in the record (including screenshots of Facebook pages with the same profile image) indicates the two Respondents are married. - The disputed domain names both contain the Complainant's trademark VOGUE. - Both websites found at the disputed domain names are offering similar services and doing similar acts, and both target the Complainant and interfere with the VOGUE Marks in the same way. - The websites published at the disputed domain names have a similar look and feel and reference one another. The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. Accordingly, conditions for consolidation of the disputed domain names into one matter are present here. B. Identical or Confusingly Similar There is no doubt that the Complainant enjoys trademark rights in the VOGUE Marks. The Respondent’s informal email response appears to argue that the word “vogue” is either descriptive or generic and thus the Complainant should not be afforded rights in the VOGUE Marks. The Panel disagrees with such assertion, finding that the Complainant’s trademark registrations and long and widespread use of those marks clearly establishes those rights. The disputed domain names incorporate the mark VOGUE in its entirety. For purposes of the Policy, this is enough to establish confusing similarity. The words "Canadian" and "casting" within the respective disputed domain names do not eliminate the confusing similarity. The Complainant has succeeded under this first element of the Policy. C. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondents. On this point, the Complainant asserts that: - The Complainant never granted the Respondents the right to use or register the VOGUE Marks, either in connection with the disputed domain names or any bona fide offering of goods and services or for any other reason. - The Respondents deliberately suggest an affiliation with the Complainant for commercial gain in offering modeling packages to purportedly appear on the Complainant’s Canadian version of VOGUE magazine, and therefore cannot constitute fair use. - The Respondents have used the disputed domain names for unauthorized activities comprised of impersonation/passing off, and this can never confer rights or legitimate interests on the Respondents. - The disputed domain names were registered with the aim to fraudulently misrepresent to the public as being an official website of the Complainant. The Respondents have not formally introduced any of their own evidence to contradict these assertions. The Panel finds that the Respondents’ activity – as described by the Complainant and supported by the record – does not rise to the level of a bona fide use of the disputed domain names, nor does it meet any of the other criteria set out in the Policy that could show the Respondents’ rights or legitimate interests in the disputed domain names. Furthermore, the nature of the disputed domain names, composed of the Complainant’s VOGUE Marks plus an additional term, coupled together with the content at the websites found at the disputed domain names clearly illustrate the Respondents’ attempt to effectively impersonate the Complainant or suggest the Complainant’s sponsorship or endorsement of the disputed domain names, which cannot constitute fair use. Accordingly, the Complainant has established, prima facie, that the Respondents lack rights or legitimate interests in the disputed domain names, and the Respondents have not come forth with evidence to rebut that showing. The Panel finds that the Complainant has satisfied this second element of the Policy. D. Registered and Used in Bad Faith The Complainant’s VOGUE Marks are well known, and it is clear that the Respondents were aware of those marks when they registered the disputed domain names. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain names. Bad faith use is clear from the Respondents’ activities of using the disputed domain names in association with websites providing fashion industry related content and purporting to provide services related thereto. The Respondents’ use of the VOGUE mark and their development of websites that mimic the look and feel of the Complainants’ branding emphasizes the bad faith use. The Panel is not moved by the Respondents’ protestations in their informal response, that since “vogue” is a descriptive or generic term, their use in the disputed domain names is proper. On the contrary, the facts of this case show that the Respondents targeted the Complainant and its well-known VOGUE Marks. For these reasons, the Panel finds that the Complainant has successfully met this third Policy element. 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 names Evan D. Brown Christopher J. Pibus William R. Towns
Presiding Panelist
Panelist
Panelist
Date: February 10, 2021
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