WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers, Inc. v. Aiyi Technologies Co., Ltd

Case No. D2003-0526

 

1. The Parties

The Complainant is Advance Magazine Publishers, Inc., New York, United States of America, represented by Shirley Kwok, China.

The Respondent is Aiyi Technologies Co., Ltd, Xiamen, Fujian, China.

Based on the facts presented by the Complainant, the Panel finds that there are such connections between Aiyi Technologies Co. Ltd., CSG, Sam Chen and Chen Jiang Feng that all these individuals/companies will be considered as Respondent in this decision.

 

2. The Domain Name and Registrar

The disputed domain name <voguechina.com> is registered with eNom Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2003. On July 4, 2003, the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the domain name at issue. On July 15, 2003, eNom Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 9, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 5, 2003.

The Center appointed Peter G. Nitter, Yong Li and Clive L. Elliott as Panelists in this matter on August 19, 2003. 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 is the owner of the trademark VOGUE.

The Complainant owns numerous trademark registrations for VOGUE in connection with various classes of goods and services worldwide, ref Annex R to the Complaint.

In China, where Respondent is residing, the Complainantís affiliated company Les Publications Conde Nast S.A. has more than ten registrations for the mark VOGUE. Details of some of Complainantís registrations are as follows:

Trademark

Class

Reg. No.

Reg. Date

VOGUE

63 (China)

76000

July 15, 1977

VOGUE

25

76001

July 15, 1977

VOGUE

63 (China)

97264

September 29, 1979

VOGUE

42

1287356

June 21, 1999

VOGUE

25

1288543

June 28, 1999

VOGUE

41

1299845

July 28, 1999

VOGUE

03

1516302

February 7, 2001

VOGUE

41

1779806

May 28, 2002

The Complainant noted in June 2002, the registration of the disputed domain name with Network Solutions Inc. by Sam Chen.

On June 14, 2002, Counsel for the Complainant issued a cease and desist letter to Sam Chen explaining the Complainantís rights and requesting cancellation or transfer of the domain name, ref. Annex D to the Complaint.

Sam Chen replied the same day and refused to give up the domain name, claiming that he had not heard of the Complainantís trademark, or VOGUE magazine. He also mentioned that he had other websites, including "www.modelsky.com" and "www.yestuit.com." References to and reproductions of Complainantís VOGUE magazines were found on these sites, ref. Annex F to the Complaint.

On July 6, 2003, Sam Chen asked for US$3,000 as a compensation for his loss for transferring the disputed domain name. The amount was subsequently lowered to US$1,500 and then to US$600. Ultimately, Sam Chen agreed to remove the copyright infringing materials from his websites and not to use the disputed domain name and to give it up by cancellation or transfer at no costs, ref. Annex H and I to the Complaint.

During the preparation of the transfer the Registrar of the disputed domain name was changed to OnlineNic, Inc., ref. Annex J to the Complaint.

Counsel for the Complainant received emails from one China Star Group (CSG) a United Arab Emirates company on September 20 and 21, 2002, claiming that Sam Chen was only their ex-employee, that Sam Chen had left its employment, that CSG was the true owner of the domain name and that transfer was no longer free of charge and that negotiations should be conducted with CSG, ref. Annex K to the Complaint.

There was another change on October 14, 2002, of the Registrar to eNom Inc. with a change of the Registrant to CSG, ref Annex M to the Complaint.

On October 17, 2002, CSG asked for US$3,000 as compensation for their loss if transferring the domain name, ref Annex N to the Complaint.

In January 2003, the Complainant noted another transfer of the domain name to Aiyi Technologies Co. Ltd., ref. Annex O to the Complaint.

When the Complainant made a phone call to Aiyi Technologies Co. Ltd on February 21, 2003, the person answering identified himself as Sam Chen.

The website "www.aiyi.com" showed on January 30, 2003 the same as that of "www.yesuit.com." It is also stated on the site that the copyright of the materials thereon belonged to "yesuit.com," ref. Annex P and F to the Complaint.

On June 27, 2003, a further check of the eNom Inc. Whois database showed that the name of Sam Chen again appeared under the name of the Registrant, ref. Annex Q to the Complaint.

 

5. Partiesí Contentions

A. Complainant

The Complainantís trademark VOGUE is internationally famous, and the Complainant is one of the worldís most successful magazine publishers. Through its unincorporated division, The Conde Nast Publications Inc., the Complainant publishes such well-known magazines as VOGUE, Glamour, The New Yorker, Self, Vanity Fair and GQ.

Launched in 1892, VOGUE is the worldís major fashion and style magazine for women. The U.S. edition of VOGUE reaches an average monthly audience of over 1,100,000 and is published in: England, France, Germany, Spain, Brazil, Italy, Greece, Russia, Korea, Taiwan, Japan and Australia.

In its decision against the registration of the trademark "V IN VOGUE" in an opposition proceeding, Chinaís Trademark Review Adjudication Board ruled in a decision on April 26, 2001, that: "although the word "VOGUE" is a general English word, the (Complainant) has been using its mark and obtained registration thereof over the world. Through extensive use, registration and promotion, the (Complainant) has established its reputation and acquired distinctiveness of trademark VOGUE."

The Complainant operates through Conde Nast the following domain names:

<vogue.com>
<vogue.co.uk>
<vogueparis.com>
<vogue.de>
<vogue.es>
<vogue.it>
<vogue.ru>
<vogue.com.au>
<vogue.co.jp>
<vogue.co.kr>
<vogue.com.tw>
<voguehellas.gr>

Millions of consumers worldwide instantly recognize the name and mark VOGUE and associate the mark with the Complainantís upscale fashion and style publications and online services.

Given the worldwide reputation of the Complainantís VOGUE mark consumers who view the disputed domain name will instantly recognize the VOGUE trademark and assume that it may be linked to the other VOGUE websites and/or to the goods and services provided under the VOGUE mark.

The disputed domain name consists of the Complainantís identical trademark VOGUE. The other part of the domain name "china" is simply a generic geographical indication, ref. Advance Magazine Publishers Inc. v. Marcellod Russo, WIPO Case No. D2001-1049 regarding <vogueaustralia.com>.

Other WIPO panels have also found that "the addition of a country name does not avoid confusion." Reference is made to Advanced Magazine Publishers Inc. v. Models USA Inc., WIPO Case No. D2002-0907. In this case the domain names <voguebritain.com>, <voguecanada.com>, <vogueengland.com>, <voguefrance.com> and <voguegermany.com> confusingly similar to the Complainantís VOGUE trademark.

The disputed domain name is confusingly similar to the VOGUE trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant never granted the Respondent the right to use or register the VOGUE mark, either in connection with a domain name registration or a bona fide offering of goods and services or for any other reason.

The Respondent has not been commonly known by the disputed domain name.

No proof has ever been provided by the Respondent to show that it has any legitimate rights or interest in the disputed domain name. The Respondent has on the contrary implicitly agreed that it does not have legitimate rights therein and has agreed at one stage to cancel the domain name without charge.

The domain name is registered and is being used in bad faith.

The Respondent Knew of the Complainantís Vogue Trademark when Registering the Disputed Domain Name

The Complainant refers to prior WIPO panels which have found that when the trademarks concerned were famous, the Respondents should have known of the Complainantsí trademarks when registering the disputed domain names and hence the registration was made in bad faith. In this case, given the longstanding use and fame of the Complainantís VOGUE trademark, the Respondent should have known of the same when registering the disputed domain name.

As reproductions of Complainantís VOGUE magazines were found on the Respondentís websites "www.yesuit.com" and "www.aiyi.com" it is inconceivable that Respondent was not aware of the VOGUE trademark when registering the disputed domain name.

The domain name was registered or acquired primarily for the purpose of selling or transferring the domain name to the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.

The Complainant states under this section that the domain name does not lead to a website or other on-line presence. The Panel entered the web page "www.voguechina.com" and found that this has now changed, as the domain name leads to a website with a list of different factories and links to the websites of these factories.

Both Sam Chen and CSG agreed to transfer the disputed domain name to the Complainant against a compensation which started out to be US$3,000 and was subsequently lowered when this was not accepted by Complainant. No details or documentary proof was ever provided by Respondent to show that the amounts it asked for are only its out-of-pocket costs. The Respondent only claimed to have invested a lot of money and labour in building the website.

The domain name was registered primarily for the purpose of transferring it to the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.

Previous Cybersquatting Activities of the Respondent

In March 2002, the Complainant noted the registration of the domain name <china-vogue.com>. The Registrant of the domain name is called Chen Jiang Feng. After negotiations with Chen Jiang Feng, the said domain name was finally transferred to the Complainant for US$650. During negotiations with Sam Chen and CSG regarding this domain name, several circumstances strongly indicated that Sam Chen was in fact Chen Jiang Feng:

(i) Chen Jiang Fengís Chinese name appears on CSGís website at "www.dibai.com," ref. Annex Y to the complainant. Chen Jiang Fengís mobile number as stated on the website was exactly the same as Sam Chenís, ref. Annex C and Q to the complaint.

(ii) When counsel for the Complainant called CSGís branch office in China on October 9, 2002, Ms. Lin Yimin confirmed that the Chinese name of Sam Chen was Chen Jiang Feng.

(iii) On the printout that shows that the disputed domain name did not point to any website ref. Annex V to the Complaint, it is stated that one may try visiting "www.jiangfeng.net."

It is very likely that Sam Chen and Chen Jiang Feng are the same person. This is further proof that Sam Chen is aware of the Complainant.

As evidenced by the events described under section 4 above, notwithstanding the changes of registration details of the disputed domain name, the connections among Sam Chen, CSG and the Respondent are evident. The changes are merely part of tricky maneuverings, probably to make it difficult for the Complainant to take any legal action. The control of the domain name has never been changed, and lies with Sam Chen and/or CSG.

The registration and use of the domain name cannot possibly be in good faith.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Because the Respondent has defaulted in providing a response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, Paragraph 14(a)), and the Panel may draw such inferences from the Respondentís default as the Panel finds appropriate (Rules, Paragraph 14(b)).

A. Identical or Confusingly Similar

The domain name in question is <voguechina.com>.

Complainant has provided evidence that Complainant is the legitimate holder of the VOGUE trademark. The trademark has been registered in China since 1977, and numerous registrations are made of the trademark in various countries throughout the world. The Panel determines that the Complainantís rights in the trademark arose prior to the Respondentís registration of the disputed domain name, on May 27, 2002.

The addition of a generic term like China to a well-known trademark in a domain name does not eliminate confusion. The Panel refers to the WIPO cases presented by Complainant under section 5 A above.

Since the mark VOGUE is well known and since the mark is incorporated in its entirety in the disputed domain name and that the disputed domain name is a combination of the identical prefix VOGUE and the generic suffix "china," Internet users are likely to be misled or confused as to Complainantís relationship to, affiliation with, or endorsement of, the websites which can be located through the domain name.

Panel decides that the disputed domain name is confusingly similar with the trademark VOGUE.

B. Rights or Legitimate Interests

In an email of June 14, 2003, from the Respondent to counsel of the Complainant, the Respondent states that:

"We operated a studio of vogue design for years. And the name of the studio is Ďvoguechina.í It is well known in my city."

The Complainant does not accept this explanation and asserts that the Respondent has no rights or legitimate interests in respect of the domain name because the Respondent does not have any VOGUE trademark registration and because the Complainant has not authorized the Respondent to register or use the VOGUE mark.

The Panel finds that Respondentís explanation regarding the name of the studio is irrelevant to this case as the domain name is not used in connection with the studio. The domain name leads to a website with a list of different factories and links to the websites of these factories. Even if it had been used only in connection with any studio, Respondent has not presented any proof of the use of the name "voguechina" in the way it is stated in his email.

Further, Respondent has implicitly agreed that it has no legitimate interests as Respondent at one stage agreed to cancel the domain name voluntarily without charge.

The Panel concludes that that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

In the mentioned email of June 14, 2003, from the Respondent to counsel of the Complainant the Respondent states that:

"Moreover, we never heard of your trademark, your product, and even your company before your letter. We understand that the word "Vogue" is a generic word and the prefix "china" is commonly used in network."

The Panel finds this hard to believe, as the well-known VOGUE trademark has a long history and was registered in China in 1977. The Panel finds that the registration has been made in bad faith as the Respondent is unlikely (on a reasonable objective assessment) to have been unaware of the fact that VOGUE is a famous trademark.

The Panel finds that the domain name also was used in bad faith. The Respondent offered the domain name for the price of US$3,000 on two occasions in reply to the Complainantís representative. The first time Respondent offered a discount when the Complainant would not accept the first price offered for the domain name. The price was reduced from US$3,000 to US$1,500 and finally to US$600. The Panel finds that the Respondent did register the domain name for the purpose of selling it and actively tried to do so, albeit without success.

On the basis of the proof presented by the Complainant the Panel finds that it is most likely that Chen Jiang Feng and Sam Chen is the same person. The Panel infers from this that Sam Chen was aware of the Complainant at the time of registering the domain name. This also shows bad faith as the Respondent has tried to hide its real identity from the Complainant, and because the Respondent has been involved with previous cybersquatting activities as he registered the domain name <china-vogue.com> which was finally transferred to the Complainant for approximately US$650.

The Panel decides that Respondentís bad faith has been established.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <voguechina.com> be transferred to the Complainant.

 


 

Peter G. Nitter
Presiding Panelist

Yong Li
Panelist

Clive L. Elliott
Panelist

Dated: September 2, 2003