Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented by Advance, United States.
Respondent is Christian Sopke, SOPI-Media, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on January 19, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 9, 2021. On March 3, 2021, the Center’s email of Notification of the Complaint was copied to two additional email addresses linked to Respondent’s, [...]@voguemagazin.com and [...]@seo-dynamics.com.@vx-laboratories.com, and an additional five day period (i.e., through March 8, 2021) was granted to the Respondent by the Center to indicate whether it would like to participate in the proceeding. No email communication was received from the Respondent. The Center appointed Marina Perraki, Antony Gold, and Torsten Bettinger as panelists in this matter on March 31, 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. Procedural issue: Language of the proceedings Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The paragraph also provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registrar’s Registration Agreement is made available in German. Notwithstanding the Registration Agreement being in German, Complainant requested that English be adopted as the language of the present proceeding. The Panel considers the following assertions of Complainant: - the Domain Name was used in relation to a website, the text of which was in the English language (the Website); - the Website terms and conditions were in English; and - the Website contact page and “about” page were in English. Furthermore, Respondent has been given an opportunity to object to the language of the proceedings being English through the submission of pleadings to the Complaint but has chosen not to respond. The Panel accepts Complainant’s request and determines that the language of this proceeding will be English (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.5.1 and 4.5.2, Laverana GmbH & Co. KG v. Silkewang, Jiangsu Yun Lin Culture Communication Co., Ltd. / xia men yi ming wang luo you xian gong si,WIPO Case No. D2016-0721, eBay Inc. v. NicSoft, Antonio Francesco Tedesco,WIPO Case No. D2014-0812). 5. Factual Background Complainant is one of the world’s most successful magazine publishers and publishes magazines such as Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ. Launched in 1892 VOGUE is the world’s major fashion and style magazine for women. With over 125 years of history, VOGUE magazine’s average monthly total audience reach across all media platforms is over 100 million. In addition to the United States edition, VOGUE magazine is published through Complainant’s subsidiaries or through local licensees in many countries, including the United Kingdom, France, Germany, Spain, Brazil, Italy, Greece, Portugal, the Russian Federation, the Republic of Korea, Japan, Australia, China, and countries in Latin America and the Caribbean, and in the Middle East. Since 2000, Complainant also operates the website “vogue.com”. This website features fashion show videos, VOGUE magazine content, photos, designer profiles and current apparel line information, as well as advertisements from luxury brand owners. Other VOGUE websites are operated by Complainant, its subsidiaries and licensees in many countries, including Germany, the United Kingdom, France, Italy, the Russian Federation, Japan, Australia and the Republic of Korea. Complainant’ group is the owner of over 1,000 trademark registrations for VOGUE worldwide, including: - German trademark registration No. 1048694, VOGUE (word), filed on November 6, 1982, and registered on May 20, 1983, for goods in international class 16; - German trademark registration No. 1027632, VOGUE (word), filed on July 13, 1979 and registered on January 13, 1982, for services in international classes 41 and 42; and - European Union trademark registration No. 003736097, VOGUE (word), filed on March 23, 2004 and registered on January 18, 2007, for services in international classes 41 and 42. The Domain Name was registered on September 1, 2016, and leads to the Website, an online platform for fashion and style related content, describing itself as “social network for people with an interest in fashion, designer fashion, trends, style, accessories, beauty, celebrities, celebrity news, lifestyle, shopping, music, movies and TV, fitness and health, and related topics”. On or around March 24, 2020, Complainant’s lawyers sent a letter to Respondent requesting them to stop using the Domain Name and transfer it to Complainant. On or about May 5, 2020, Respondent called Complainant’s lawyers and agreed to comply with the demand letter. Since then, Complainant’s lawyers proceeded to numerous follow-up emails and calls to Respondent, to which Respondent did not respond nor answered the calls. Respondent then closed the Website, as to be accessed only by users who have an account and password. Complainant filed a court action against Respondent before German courts, seeking an injunction. On May 29, 2020, the Düsseldorf court granted an injunction against Respondent. The order prohibits Respondent from using “Voguemagazin” in trade in Germany in connection with social media platforms. Currently, the Website resolves to a login page. 6. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant has demonstrated rights through registration and use on the VOGUE mark. The Panel finds that the Domain Name is confusingly similar to the VOGUE trademark of Complainant. The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The word “magazin”, which is the German translation for “magazine”, added to the Domain Name does not prevent a finding of confusing similarity, as the VOGUE mark remains clearly recognizable (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434, WIPO Overview 3.0 section 1.8). The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is confusingly similar to the VOGUE trademark of Complainant. Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Respondent did not demonstrate any rights or legitimate interests in the Domain Name prior to the notice of the dispute use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrated, the Domain Name leads to the Website which is an online platform for fashion and style related content, describing itself as “social network for people with an interest in fashion”, namely a website with content targeting Complainant’s trademark and field of business, which Respondent subsequently, after receipt of Complainant’s demand letter, closed so as to be accessed only by users with an account and password. As Complainant demonstrated, a court order has been issued against Respondent prohibiting use of the Domain Name in Germany in relation to social media platforms. In addition, the Domain Name incorporates entirely Complainant’s mark, with the added term “magazin” (which directly describes Complainant’s business, namely publication of the VOGUE magazine), and thus carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1). Noting that the term “magazin” is clearly connected with Complainant’s VOGUE magazine, the Panel finds that the Domain Name suggests that it is an official site of Complainant or affiliated to or endorsed by Complainant, an impression which is affirmed by the Website and its content being described as “social network for people with an interest in fashion”. The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. VOGUE, a well-known mark that enjoys goodwill and worldwide reputation (see Advance Magazine Publishers Inc. v Marcellod Russo,WIPO Case No. D2001-1049, Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, WIPO Case No. D2004-1068), is entirely incorporated in the Domain Name. Because the VOGUE trademark had been widely registered and used at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (see Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple Internet search due to Complainant’s use of the VOGUE mark (Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc.,WIPO Case No. D2009-0462). Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the VOGUE mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). The addition of the word “magazin” in the Domain Name, which directly describes the VOGUE magazine of Complainant, clearly suggests that Respondent had knowledge of Complainant’s trademark and its business. This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry. As regards bad faith use, Complainant has demonstrated that the Domain Name leads to the Website which is an online platform for fashion and style related content, describing itself as “social network for people with an interest in fashion” namely targeting Complainant and its field of business. Respondent has therefore been using the Domain Name, without Complainant’s authorization, giving the false impression of being operated by Complainant or an entity affiliated to Complainant or an official partner of Complainant. The Panel finds that the Domain Name has been operated by Respondent intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the Website it resolved to. Following Complainant’s demand letter, Respondent closed the Website to be accessed only by users with an account and password. A German court issued in May 2020 an order prohibiting use of the Domain Name in Germany in relation to social media platforms. The Panel takes into account: a) the worldwide reputation of Complainant’s VOGUE trademark, b) the content of the Website which is related to fashion, namely targeting Complainant’s field of business, c) the addition of the word “magazin”, German for “magazine”, which directly describes Complainant’s well-known VOGUE magazine, d) the fact that per Complaint Respondent initially agreed to abide with Complainant’s demand letter, e) the fact that as Complainant demonstrated, subsequently Respondent stopped replying to Complainant’s invitations for communication and closed the Website, so as to be accessed only by users who have an account and password, and f) the fact that a court order has been issued against Respondent prohibiting use of the Domain Name in Germany in relation to social media platforms. The above clearly indicate that Respondent has registered and is using the Domain Name in bad faith. The Panel notes that the non-use of a domain name, to the extent the password protected access to the Website would be considered as such, would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3). Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith. Complainant has established paragraph 4(a)(iii) of the Policy. 8. 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, Marina Perraki Antony Gold Torsten Bettinger
Presiding Panelist
Panelist
Panelist
Date: April 14, 2021
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