WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Buy This Domain
Case No. D2002-0803
1. The Parties
Complainant in this proceeding is Advance Magazine Publishers Inc., a corporation organized and existing under the laws of the state of New York, USA, with a principal place of business at Four Times Square, New York, New York 10036, USA. The Complainant is represented in this proceeding by Eric E. Gisolfi, Esq., Sabin Bermant & Gould LLP, Four Times Square, New York, New York 10036, United States of America.
Respondent in this proceeding is Buy This Domain, c/o John Barry, 5444 Arlington Avenue 614, Bronx, New York 10471, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <vougemag.com>.
The registrar for the disputed domain name is RegisterFly.com, P.O. Box 2418, Livingston, New Jersey 07039, United States of America.
3. Procedural History
This administrative proceeding will be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on August 26, 2002, by e-mail, and on September 11, 2002, in hard copy. On August 27, 2002, the Center sent a Request for Registrar Verification to the registrar of the disputed domain name and the registrar responded on August 29, 2002, that the Respondent was correctly identified and that the registration was covered by the Policy.
On August 30, 2002, the Center sent Complainant a Complaint Deficiency Notification by e-mail because inter alia the Complainant had not sent the Center an electronic version of the Complaint. Complainant sent an Amended Complaint to the Center on September 4, 2002.
On September 12, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On October 3, 2002, the Center sent a Notification of Respondent Default to Respondent by e-mail.
Per Paragraph 3(b)(iv) of the Rules, Complainant requested a three-member Administrative Panel for consideration of this Case. The Panel submitted a Declaration of Impartiality and Independence by October 17, 2002, and the Center proceeded to appoint the Panel on October 18, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
The due date of this Decision is November 1, 2002.
4. Factual Background
Complainant is a United States company that has for many years published the magazine "Vogue" and other periodicals. Complainant owns registered trademarks for that name in many countries. The magazine has many subscribers worldwide, and is well-known internationally in connection with the presentation of fashionable clothes and designs.
Respondent, whose e-mail address is firstname.lastname@example.org, is listed as the registrant of the disputed domain name, and the record of registration was created on March 31, 2002. The disputed domain name is linked to a website which displays materials and photographs that criticize abortion practices.
5. The Parties’ Contentions (Summarized)
- Complainant, an American company, publishes several internationally well-known magazines, including one entitled "Vogue," which has been continuously published since 1892. The United States edition of "Vogue" reaches an average monthly audience of over 1,100,000. "Vogue" is also published by Complainant or its local licensees in the following countries: England, Spain, Brazil, France, Germany, Italy, Greece, Russia, Korea, Taiwan, Japan and Australia.
- Complainant owns a registered trademark for the name, "Vogue", in many countries throughout the world. As a result of its longstanding use, numerous international trademark registrations and international notoriety, "Vogue" is instantly recognized by millions of consumers worldwide and associated with Complainant’s upscale fashion and style publications and online services.
- The disputed domain name is linked to an anti-abortion website which prominently displayed disturbing photographs. On July 23, 2002, Complainant e-mailed Respondent with a message to cease using the disputed domain name. On the same day Complainant had a telephone conversation with Respondent, during which Respondent asked Complainant if it was interested in buying the <vougemag.com> domain name for $500. Respondent also advised Complainant that Respondent is "pro-life" and bought the name to generate traffic on the Internet.
- Respondent’s domain name is identical or confusingly similar to Complainant's trademark. Respondent has used "vouge" as a simple misspelling of "vogue" to deliberately and dishonestly generate traffic for Respondent's website. The addition of the letters "mag" to "vouge" does not reduce the similarity, because "mag" is short for "magazine," which is Complainant's primary business.
- Respondent has no rights or legitimate interests in respect of the domain name.
- Respondent registered and is using the disputed domain name in bad faith. Respondent was clearly aware that Internet users would occasionally misspell the word "vogue" and access the disputed domain name by mistake. Respondent's primary intent in registration and usage is to sell the name to Complainant for more than registration costs. In addition to Respondent's request to Complainant for money, Respondent's name, "Buy This Domain" and it's e-mail address, email@example.com, provide substantial evidence of this intent.
- Since Respondent did not file a response to the Complaint, the Panel is unaware of any contentions Respondent may have.
- The Panel notes that the Center forwarded a copy of this Complaint to Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail. Those actions by the Center convince the Panel that Respondent has been notified fairly of these proceedings and has not been denied its right to due process.
6. Discussion and Findings
According to the Policy at Paragraphs 4(a)(i) through (iii), Complainant may prevail in this administrative proceeding and be awarded the disputed domain name, <vougemag.com>, if Complainant can prove the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Panel finds that Complainant owns valid registrations of the trademark "Vogue" in the United States (e.g., No. 1,659,761, dated October 8, 1991, and renewed in 2001, and No. 103,770 dated April 13, 1915, and renewed in 1995) as well as similar trademarks in many other countries, including Canada (see Annex D to the Complaint). Complainant's rights in those trademarks pre-date significantly Respondent's registration of the disputed domain name.
The disputed domain name, <vougemag.com>, is not identical to Complainant's trademark. In analyzing the similarity between the two, the Panel may first disregard summarily the gTLD, ".com", per the nearly unanimous practice of prior Policy panels. See for example, Ticketmaster Corporation v. Discover Net, Inc., WIPO D2001-0252 (April 9, 2001) and Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF FA95856 (December 18, 2000).
The Panel is then left with "vougemag" versus "vogue." Clearly "vouge" is very close to "vogue," the difference being the transposition of the letters "g" and "u." Many prior WIPO panels have confronted similar cases where the difference in computer entry between two words could result easily from a simple typographical error, coining a phrase "typo-squatting" where they have found that such a situation gives rise to at least confusing similarity if not identity between the trademark and domain name in question See Ffizer Inc. v. Phizer's Antiques and Robert Phizer, WIPO Case No. D2002-0410 (July 3, 2002) and The Nasdaq Stock Market, Inc. v. Nsdaq.com, Nasdq.com and Nasaq.com, WIPO Case No. D2001-1492 (February 27, 2002).
Moreover, the addition of "mag" behind "vouge" does not erase the confusion in this case. "Mag" is the commonly recognized abbreviation for "magazine," which is the primary product on which Complainant's trademark is used. Thus, if anything, the inclusion of "mag" may tend to heighten Internet users’ confusion in differentiating between the name and the mark. The Panel notes that previous panels ruling under the Policy have held that, where additional letters or words in a domain name relate directly to the business represented by the complainant's trademark, confusing similarity between the name and the trademark is not lessened by that addition. See Wachovia Corporation v. Organized Crime, Inc., WIPO Case No. D2002-0362 (June 13, 2002); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (March 3, 2000).
In view of the foregoing, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
No Rights or Legitimate Interests
While Paragraph 4(a)(ii) of the Policy places on Complainant the burden of proof to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name, the difficulty of excluding all possible rights or interests Respondent may have in the name causes the Panel to look through the full record in this case to determine if there is any evidence to sustain a finding that Respondent has such rights or interests.
Paragraph 4(c) of the Policy furnishes Respondent with three ways in which it can demonstrate rights or legitimate interests in the disputed domain name. Per Paragraph 4(c)(i), Respondent could have entered evidence that, before any notice to Respondent of this dispute, its use or demonstrable preparation to use the name or another corresponding name in connection with a bona fide offering of goods or services. However, as Respondent has not filed a Response, there is no such evidence in the record. Similarly, there is no evidence before the Panel that would satisfy the criterion establishing rights or legitimate interests enumerated in Paragraph 4(c)(ii), i.e., that Respondent is commonly known by the disputed domain name.
Although Respondent has submitted no evidence establishing that Respondent is making a legitimate noncommercial or fair use of the disputed domain name in satisfaction of the criterion listed in Paragraph 4(c)(iii), Complainant has referred to Respondent's display of anti-abortion materials and photographs on a website linked to the name. Certainly Respondent has the right to post its views on abortion over the Internet. However, fair use of a domain name of confusing similarity to Complainant's trademark requires a direct informational reference to Complainant or its products, such as would be involved in criticism, parody or evaluation of either. The linked website does not mention Complainant, the trademark or the trademarked products. If there was evidence that Complainant was engaged in public support of a differing opinion from Respondent on abortion, then Respondent's link to the anti-abortion website might be considered fair use. But no such evidence has been presented to the Panel. In fact, Respondent's use of a domain name similar to Complainant's mark may convince Internet users that Complainant supports the position taken on the website. That is not a legitimate noncommercial use of the disputed domain name by Respondent.
Since the record shows no other rationale to support a claim by Respondent to rights or legitimate interests, the Panel determines that Complainant has sustained its burden in proving that Respondent has no rights or legitimate interests in respect of the disputed domain name.
In addition to providing the Panel with evidence that Respondent is using the disputed domain name as a platform for anti-abortion materials and pictures, Complainant alleges that, during a phone call to Respondent, Respondent invited Complainant to purchase the name for $500. That sum is obviously in excess of normal domain name registration fees, and Complainant argues that this offer is evidence of Respondent's bad faith in registration and use of the disputed domain name pursuant to the specific criterion cited in Paragraph 4(b)(i) of the Policy, i.e., "circumstances indicating that [Respondent has] registered…the domain name primarily for the purpose of selling…the domain name registration to the complainant who is the owner of the trademark or service mark…for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."
The Panel is inclined to believe Complainant's non-contradicted allegation and accept its argument based on two other factors: Respondent's name, "Buy This Domain", and Respondent's e-mail address, firstname.lastname@example.org (seemingly short for "Domain Names for Sale"). Both of these factors indicate that Respondent is in the business of acquiring and selling domain names. Though this practice is not prohibited under the Policy, when combined with the acquisition of domain names that are confusingly similar to well-established trademarks, it sets the stage for bad faith dealings. It would be hard to believe that Respondent was unaware of "Vogue" magazine when it registered the disputed domain name. Thus, while Respondent may be promoting "pro-life" views by linking the disputed domain name to an existing website (an inexpensive undertaking), the Panel concludes that the primary purpose in Respondent's registration and use of the name was to sell it to Complainant for more than Respondent's directly related out-of-pocket costs.
Accordingly, the Panel finds Complainant has sustained its burden of proof in showing that the domain name was registered and is being used in bad faith.
The Panel concludes that the disputed domain name, <vougemag.com>, is confusingly similar to Complainant’s "Vogue" trade and service marks. The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel concludes Respondent registered and is using the disputed domain name in bad faith because Respondent's primary intent was to sell the name to Complainant for more than Respondent's out-of-pocket costs directly related to the name.
In accordance with the discussion above and Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <vougemag.com>, be transferred from the Respondent, Buy This Domain, to the Complainant, Advance Magazine Publishers Inc.
Dennis A. Foster
Dated: November 1, 2002