WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advanced Magazine Publishers, Inc. v. HiLetsWorkTogether.com
Case No. D2001-1005
1. The Parties
Complainant is Advanced Magazine Publishers, Inc. a New York Corporation located at 4 Times Square, New York, New York, 10036. Complainant is represented by Eric E. Gisolfi, Esq. of the firm Sabin, Bermant & Gould LLP, Four Times Square, New York, NY 10036, USA.
According to the complaint, the Respondent is HiLetsWorkTogether.com located at 2735 North Clarke Street, No. 143, Chicago, Illinois, 60614. The administrative and technical contact for Respondent is Antonio Diaz with an email address of firstname.lastname@example.org. Respondent is not represented by counsel.
2. The Domain Name and Registrar
The Domain Name in dispute is <vogueenespanol.com> registered with BulkRegister.com, Inc. located at 7 East Baltimore Street, Baltimore, Maryland, 22102. The Domain Name was created on April 9, 2001.
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"), which apply to the Domain Name.
The initial Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO") by email on August 7, 2001, and by hard copy on August 9, 2001. On August 17, 2001, this matter was suspended at the request of the Complainantís counsel in order to try to amicably resolve the matter. Complainant advised WIPO on September 21, 2001, that its efforts to settle had failed and the case was reinstated. On September 24, 2001, WIPO requested that Complainant file an amended Complaint to correctly identify the registrar of the Domain Name. The amended Complaint was submitted to WIPO by email on September 25, 2001, with hard copies delivered to WIPO on September 27, 2001. WIPO confirmed that the Complaint complied with the Policy and the Rules and the Registrar verified the information relating to the ownership of the Domain Name.
On October 1, 2001, WIPO notified the Respondent that the complaint had been filed and that this administrative proceeding had commenced. Respondent was advised that it had until October 20, 2001, to respond to the complaint. The notification was sent to Respondent using the contact information provided to the Registrar. Federal Express records indicate that WIPOís package was delivered to Respondentís address on October 3, 2001. Respondent did not submit a response to the complaint and was declared to be in default by notice dated October 22, 2001. The record in this case shows no attempt by Respondent to lift the default or to otherwise respond to the allegations in the complaint.
In its complaint, Complainant requested that a three member panel decide the dispute. WIPO appointed such a panel and on November 9, 2001 transmitted the case file to the administrative panel for determination.
4. Factual Background
The facts are taken from the complaint submitted. Complainant is a magazine publisher responsible for the magazines Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ. Vogue was launched in 1892 and currently is a well-known and recognized fashion and style magazine for women. The magazine, distributed in the U.S. and internationally, has an audience of over 1 million readers monthly. According to Exhibit D to the Complaint, Complainant owns 7 registrations for VOGUE alone and an additional 16 registration for marks that include VOGUE. The registrations date back to 1908.
In addition to its use of the mark VOGUE in connection with the magazine, Complainant, through its licensee, publishes a Spanish language edition of Vogue titled Vogue en Espanol. According to articles provided by Complainant, the Vogue en Espanol magazine was launched in October 1999 and was announced in September, 1999. Complaint Exhibit F.
Respondent registered the Domain Name <vogueenespanol.com> on April 9, 2001. In the registration form, registrant states "This Domain might be FOR SALE! Contact us today." Complaint Exhibit A. There does not appear to be any website connected to the Domain Name.
Complainant undertook an investigation to determine the ownership of <vogueenespanol.com>. The investigation revealed that the email address for the administrative and technical contact was owned by a company called Americaenespanol.com. On May 24, 2001, counsel for Complainant sent a demand letter to the proprietor of Americanenespanol.com requesting that the Domain Name be transferred. Complaint Exhibit L. No response was received to that letter or to a follow-up letter. In addition, a letter was sent to the administrative contact for the Domain Name by using the email address set forth in the WHOIS registration form. Complaint Exhibit J. There was no response to the demand letter.
5. Partiesí Contentions
Complainant contends that it has rights in and to the mark VOGUE and VOGUE EN ESPANOL based on its use of both marks and its federal registrations for VOGUE; that the Domain Name <vogueenespanol.com> is confusingly similar to Complainantís VOGUE and VOGUE EN ESPANOL marks; that Respondent has no right to or a legitimate interest in the Domain Name; and that the Domain Name was registered and is used in bad faith.
By failing to file a response, Respondent has not denied Complainantís contentions.
6. Discussion and Findings
To obtain relief under the Policy, paragraph 4(a) thereof requires Complainant to prove each of the following:
- That the Complainant has rights in the VOGUE mark;
- That the Domain Name registered by the Respondent is identical or confusingly similar to the trademarks in which the Complainant has rights;
- That the Respondent has no rights or legitimate interest in the Domain Name; and
- That the Domain Name has been registered and used in bad faith.
A. Rights in the Marks
Complainant has demonstrated rights in the VOGUE marks based on its use of and its registrations for VOGUE and VOGUE formative marks. These rights were acquired prior to the date of the Domain Name registration. Registrations of a trademark are sufficient to establish rights under the Policy. E Auto, L.L.C. v. Triple S Auto parts, WIPO D2000-0017. Furthermore, rights can be established through usage without need for registration. CSA Int'l. v John O'Shannon and Care Tech Industries, Inc., WIPO D2000-0071. Because Complainantís rights in VOGUE are clearly established there is no need to address whether Complainant itself has rights in VOGUE EN ESPANOL.
B. The Domain Names are Confusingly Similar to The Marks In Which Complainant Has Rights
The Domain Name incorporates in its entirety the VOGUE registered trademark of Complainant. The fact that there has been the addition of the phrase "en Espanol" to Complainantís VOGUE mark does not sufficiently distinguish the Domain Name from Complainantís registered trademark. Indeed it is likely to actually cause confusion to the extent that consumers may believe that <vogueenespanol.com> refers to the Spanish language version of Complainantís Vogue magazine which was in existence prior to Respondentís adoption of the Domain Name. See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO D2000-0150 (notwithstanding addition of geographic modifier to mark, domain name and mark are confusingly similar). Accordingly, Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
C. Legitimate Interests
Under the Policy, a legitimate interest in the 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 legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademarks at issue. Policy paragraph 4(c). Complainant sent demand letters to Respondent and to Respondentís affiliates. If Respondent had legitimate interests it would have responded to the letter (as well as to the complaint) to explain the basis for registering <vogueenespanol.com>. The fact that Respondent ignored demand letters gives rise to the inference that Respondent has no legitimate rights. Viacom International, Inc. v. MTVMP3.COM, WIPO D2000-0275.
The evidence submitted by the Complainant makes it clear that there is no use being made of the Domain Names in connection with either a bona fide offering of goods or services or use in a legitimate non-commercial or fair manner. Furthermore, as set forth in the complaint, Respondent has never been granted the right to use or register any of the names of Complainantís publications either in connection with Domain Name registrations, in connection with the bona fide offering of goods or services, or for any other reason.
The most compelling evidence that Respondent lacks any rights or legitimate interest in the Domain Name is the fact that in the Domain Name registration form itself, Respondent has proposed selling the Domain Name. Hyosung Corp. v. HH, WIPO D2000-0236; Bayerische Motoren Werk A.G. v. JIMXTRADE.COM, Selling Premium Domain, WIPO D2000-1693 (including a sales offer in registration record unmistakably conveys Respondentís intent to sell rather than legitimately use the Domain Name). Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Bad Faith Registration and Use
The final element that Complainant must prove is that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth various types of evidence showing registration and use in bad faith, although the Panel is not limited to those circumstances in finding bad faith use and registration. See e.g., Canada v. eResolution.com, WIPO Case No. D2000-0110.
Under Paragraph 4(b)(i) of the Policy, evidence showing that the Respondent registered the Domain Name primarily for the purpose of transferring it for valuable consideration in excess of documented out-of-pocket costs is probative of bad faith. As shown by Exhibit A to the Complaint, Respondent is offering to sell the Domain Name and has included this offer as part of its registration for the Domain Name, without any qualifier limiting the sales price to its own registration costs. This evidence is strongly suggestive of bad faith registration and use. Edgar Rice Burroughs, Inc. v. Adtel Comm., WIPO D2000-0115; NFL Properties, Inc. v. OneSex Entertainment, Co., WIPO D2000-0118. See also UDRP paragraph 4(b)(i).
Complainant has proven all of the elements of the Policy needed to obtain the relief requested. Specifically, Complainant has shown rights in the VOGUE trademark, has shown that the Domain Name <vogueenespanol.com> is identical or confusingly similar to the VOGUE trademark, that Respondent has no rights or legitimate interest in the Domain Name, and that Respondent registered the Domain Name in bad faith and is using it in bad faith. Therefore, Complainantís request for transfer of the Domain Name <vogueenespanol.com > is hereby granted.
Barbara A. Solomon, Esq.
David Bernstein, Esq.
Paul Mason, Esq.
Dated: November 26, 2001