WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Lisa Whaley
Case No. D2001-0248
1. The Parties
Complainant is Advance Magazine Publishers, Inc., a New York Corporation, located in New York, New York.
Respondent is Lisa Whaley, doing business as GQ Kids and Kid Elegance, located in Columbus, Ohio.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are ("Domain Names"):
The registrar is Network Solutions, Inc.
3. Procedural History
This action is subject to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The Complaint was submitted on February 15, 2001. The Response was submitted on March 20, 2001.
On April 20, 2001, David Kelly, Michael Froomkin and Mark Partridge were appointed as Panelists.
4. Factual Background
Complainant is the publisher of various well-known magazines, including GQ, a men's fashion magazine launched in 1957. GQ has an average monthly paid circulation of over 700,000, and reaches millions of consumers each year. Complainant also publishes international editions of GQ and operates several online editions.
The GQ mark is the subject of many U.S. and foreign trademark registrations that predate the acts of Respondent at issue in this proceeding. The GQ mark is registered for "men's magazine dealing with fashion, entertainment, and other topics of general interest" (Reg. No. 1,159,133), and for various collateral goods including "shopping bags and poster calendars, tote bags, mufflers, suspenders, headbands, caps and bandanas" (Reg. No. 1, 599,570). Complainant typically presents the GQ mark in bold, upper-case sans serif letters without punctuation. The logo format is the subject of Reg. Nos. 1,159,133; 1,833,829. As a result of long and substantial use, the GQ mark has become well-known in the field of fashion and style.
Respondent registered the domain name <gqkids.com> on July 15, 2000. She registered the additional domain names <gqboys.com>, <gqbabe.com> and <gqbaby.com>on September 6, 2000, under the name Kid Elegance.
The <gqkids.com> domain name was in use on December 5, 2000, for a website selling children's apparel. The site featured a prominent display of the domain name as a logo in the format <Gqkids.com> using upper-case, sans serif letters for the "GQ," followed by lower case "kids.com." The appearance of the GQ used by Respondent creates the same commercial impression as Complainant's GQ logo.
Respondent's site describes the nature of its online clothing catalog, in part, as follows:
"Stylish clothing, formal wear and the best in children's clothes. . . . Our goal at Gqkids is to bring you quality, fashionable apparel at reasonable prices. Your Fashion designer's showcase!
In October and November, 2000, Complainant sent letters of objection to Respondent. On December 4, 2000, Respondent called Complainant's counsel. During the course of the conversation, Respondent stated that she chose the initials GQ because they reminded her of "style." She refused to transfer the Domain Names and stated that Complainant "can buy the name from me if they want it."
The following day, Respondent called Complainant's counsel and stated that she selected the letters GQ because they were the initials for "God's Quality," chosen because her site offered clothing for children to wear to religious services. Respondent claims this choice was supported by her use of scriptural quotations at the website. However, the material submitted showing the website on December 5, 2000, does not appear to include any such quotations or religious references.
By mid December, after receiving an objection from Complainant, Respondent modified her website to change the appearance of the GQ to overlapping letters and added the phrase "Genuine Quality Kids."
On December 28, 2000, Respondent sent a letter to Complainant in which she stated that she selected the letters GQ because they were the initials for "Genuine Quality." Her letter apologizes for any misunderstanding and states that she had no intent to benefit from the Complainant's "reputation, good fortunate and obvious hard work."
Respondent claims she decided to use the phrase "Genuine Quality Kids" when she learned that "GQ God Quality" was in use for children's clothing.
5. Parties’ Contentions
Complainant contends that the Domain Names are confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith as a deliberate attempt to trade on Complainant's mark.
Respondent contends that Complainant lacks exclusive rights in the letters GQ and that the Domain Names are not confusingly similar to Complainant's mark. Respondent claims she has a legitimate interest because she began using the Domain Names to sell clothing prior to notice of the dispute and filed an application to register the Domain Name on August 20, 2000. Finally, Respondent denies that the Domain Names were registered or used in bad faith.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
Complainant has established rights in the GQ mark based on use and registration. As noted above, the mark has become well-known in the field of fashion and style as a result of long and substantial use.
The Domain Names are not identical to Complainant's mark. However, the Domain Names are all formed by adding a generic term to Complainant's mark: kids, girls, babe, baby and boys. These terms are apt selections in the fashion and style field.
Prior decision have found similar domain names to be confusingly similar. The decision in Chanel, Inc. v. Estco Technology Group, WIPO Case No: D2000-0413 , stated that "the addition of the generic terms "store" and "fashion" are not sufficient to avoid confusion" between the mark CHANEL and the domain names <chanelstore.com> and <chanelfashion.com>.
Similarly, the decision in Chanel, Inc. v. Cologne Zone, WIPO Case No: D2000-1809, considered the similarity between the mark CHANEL and the domain name <chanelpurfumes.com>, and stated:
CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, "perfumes" is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant's business.
The U.S. federal courts have considered the similarity between fashion magazines and clothing. In Publishers, Inc. v. Vogue International, 123 F. Supp. 2d 790 (D.N.J. 2000), the plaintiff published Vogue, a leading fashion and style magazine. Defendant registered the domain names <teenvogue.com>, <teenvogue.net>, and <vogue-international.com>, and used those names for websites offering clothing, cosmetics, and fashion accessories for sale. The Court issued a preliminary injunction, finding that plaintiff established a likelihood of success on its trademark infringement and ACPA claims. In finding a likelihood of success on the infringement claim, the court found, among other things, that the VOGUE mark was "highly distinctive and famous" and that the parties were both "in the fashion industry . . . ."
Similarly in Triangle Pubs. v. Rohrlich, 167 F.2d 969 (2d. Cir. 1948), MISS SEVENTEEN for girdles was found to be confusingly similar to the mark SEVENTEEN for a fashion magazine.
Applying those principles here, we believe the Domain Names are confusingly similar to Complainant's mark. GQ is the salient feature of the terms at issue. The additional generic terms are apt choices for products relating to style and fashion, the field in which Complainant has established a well-known reputation. Courts have previously recognized a likelihood of confusion between fashion magazines and clothing. We recognize that the addition of an unrelated generic term, such as "lawn mower" or "baked goods," could be sufficient in appropriate cases to avoid confusion, but that is not the case here. Therefore, we find that Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
Here, Respondent contends that is has a legitimate interest because it offers goods for sale at its site and did so before it received an objection from Complainant. Complainant asserts that Respondent's activities are a deliberate infringement of its rights and therefore cannot be bona fide use.
Other decisions recognize that consideration of good faith is a key issue in determining whether use is bona fide under the policy. See World Wrestling Federation Entertainment, Inc. v. Rift, WIPO Case No: D2000-1499 (not all use prior to notice of the dispute can qualify as bona fide use"). As explained in Ciccone v. Parisi, WIPO Case No: D2000- 0847, intentionally infringing use should not be viewed as bona fide use:
We . . . conclude that use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.
Here, Complainant sites several facts to indicate that Respondent's selection and use of the Domain Names were a deliberate infringement of Complainant's rights:
1. Respondent adopted a logo format very similar to the logo format used for Complainant's GQ mark.
2. Respondent first admitted to Complainant that she selected GQ because it reminded her of "style." Respondent does not deny this statement.
3. After receiving Complainant's objection, responded later claimed she adopted GQ for other reasons and modified her website to include the phrase "Genuine Quality Kids."
Respondent's claim that she was initially interested in the initials GQ as initials for "God Quality" kids does not seem to be corroborated by the evidence. First, we find it especially significant that she initially used on her initial page the GQ-style design typography similar to the logo used by Complainant. Without that similar logo, her alleged reasons for selecting GQ might have been more persuasive. Second, there is no indication of any religious theme on the site as it appeared at the time of Complainant's objection. When she allegedly discovered that "God Quality" was not available, she did not seek out a term with similar religious connotations. Instead, she clung to GQ by adopting the phrase "Genuine Quality." From these facts, it seems that her primary motivation was to use GQ, and that she secondarily tried to find words to fit those initials as justification after the fact. Accordingly, it seems more likely than not that her various explanations for selecting GQ were fabricated after she received Complainant's objection.
Based on the evidence before us, particularly the use of a logo similar to Complainant's, we conclude that Respondent adopted the Domain Names with the intent to benefit from the favorable associations of GQ name and mark in the field of fashion and style. Such conduct is a reckless or deliberate infringement of the GQ mark and does not give rise to a legitimate interest in the Domain Names.
Respondent's reliance on its trademark application to claim a legitimate interest seems misplaced. The application itself creates no rights in the phrase "GQ KIDS" and does not alter the conclusion that Respondent selected GQ to trade on the favorable associations of Complainant's mark.
Accordingly, we find that Respondent lacks any right or legitimate interest in the Domain Name.
C. Bad Faith Registration and Use
Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondents] have registered or [Respondents] 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 [Respondents’] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondents] 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 [Respondents] have engaged in a pattern of such conduct; or
(iii) [Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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 [Respondents’] website or location."
As specifically noted in the Policy, the circumstances of bad faith are not limited to the above. See, e.g., Telstra Corporation v. Nuclear Marshmallows, WIPO Case No: D2000-0003; 3636257 Canada v. eResolution.com, WIPO Case No:D2000-0110.
Complainant claims that Respondent's offer to sell the Domain Names is evidence of bad faith. We do not rely on that evidence here because the offer came in the context of settlement negotiations and may merely have been a good faith effort to settle rather than a bad faith attempt to profit from domain name trafficking. The evidence on this point is inconclusive. We rely instead on the evidence relating to Respondent's intent in registering and using the Domain Names.
Respondent claims that it registered and used the Domain Names in good faith because they were the initials of "God's Quality." As explained above, we do not believe that was the motivating force in selecting GQ. The claim is undermined by Respondent's initial statement that she picked GQ as a reference to "style", by the content of the website, and by her initial use of a logo format that is quite similar to the format used by Complainant.
It appears that Respondent knew of Complainant's mark when she registered and began use of the Domain Names, and that she desired to trade on the marks strong associations with style. It may be that she genuinely but mistakenly felt that she could do so because Complainant had not registered the identical phrases as trademarks or because Complainant was not directly in the retail clothing business. But a finding of bad faith does not necessarily require a finding of "evil intent."
We believe Respondent registered and used the domain name in bad faith because it appears she deliberately selected and used GQ to trade on the recognition of Complainant's mark in the field of fashion and style. She did so for commercial gain. And as noted above, her use appears to create a likelihood of confusion with Complainant's mark and is contrary to existing case law.
Accordingly, we find that Complainant has met its burden under Paragraph 4(a)(iii) of the Policy.
We conclude that the Domain Names are confusingly similar to a mark in which Complainant has prior rights, that the Registrant lacks any right or legitimate interest in the Domain Names, and that the Domain Names were registered and used in bad faith. Therefore, Complainant's request for transfer of the Domain Names <gqkids.com>, <gqgirls.com>, <gqbabe.com>, <gqbaby.com> and <gqboys.com >is granted.
Dated: May 7, 2001