WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advanced Magazine Publishers Inc. v. Computer Dazhong
Caso No. D2003-0668
1. The Parties
The Complainant is Advanced Magazine Publishers Inc., of New York, NY, United States of America and is represented by Ms. Shirley Kwok of Vivien Chan & Co, Hong Kong, China.
The Respondent is Computer Dazhong, Guangdong, China, represented by Mr. Fayun Chen of Jin Ding Partners, of Nanjing, China.
2. The Domain Names and Registrar
The disputed domain name, <voguedress.com> is registered with Network Solutions, Inc. (the Registrar).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2003. On August 26, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On September 3, 2003, the Registrar 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. The Registrar also advised the Center that English is the language of the registration agreement. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 15, 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 September 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 12, 2003. The Response was filed with the Center on October 11, 2003.
The Center appointed the Honourable Sir Ian Barker QC of Auckland, New Zealand, Mr. Yong Li of Beijing, China and Dr. Hong Xue, Hong Kong, SAR of China, as Panelists in this matter on October 30, 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.
On November 27, 2003, the Complainant purported to file a reply to the Response. It did not seek the Panel’s leave as required by the Rules. Parties to a UDRP proceeding should realize that there is no right to make supplemental filings without the express permission of the Panel. In the exercise of its discretion, the Panel has not taken this submission into account.
4. Language of the Proceedings
Despite the advice from the Registrar that it was the Registrar of the dispute domain name and that English is the language of the registration agreement, by letter dated September 21, 2003, the Respondent’s lawyers claimed that the true Registrar was Tiamen City Zhongziyoan Network Service Co Ltd, a Chinese company. It further claimed that Chinese was the language of the registration agreement and that the Chinese company was a domain registration agent for Verisign Inc. of the USA (which is the parent of Network Solutions Inc). It supplied documents in support of this contention.
On September 29, 2003, the Complainant’s lawyers submitted that the Respondent’s view as to the language of the registration agreement was incorrect for the following reasons:
(a) Paragraph 1 of the Rules provides that "registration agreement" means the agreement between a Registrar and a domain-name holder and "Registrar" means an entity with which the Respondent has registered a domain.
(b) The Chinese company is not an ICANN accredited Registrar.
(c) Network Solutions Inc. is the Registrar for the purpose of an administrative proceeding under the Policy.
The Complainant also objected to the Center extending time to the Respondent within which to file a response. The Center decided to grant an extension.
On September 23, 2003, the Center advised the Respondent that it would allow the Respondent to file its response in either English or Chinese. The Respondent chose to file in Chinese.
The Complainant requested that the Center’s decision on the language of the proceeding be reviewed by the Panel. In the Panel’s view, English is the language of the registration agreement and therefore of the administrative proceeding in terms of paragraph 11 of the Rules. The fact that the alleged Chinese Registrar is not an ICANN accredited Registrar is conclusive. Consequently on November 5, 2003, the Panel required the Center to inform the Respondent that it was to file an English translation of its response and attachments within 7 days. This was duly done by the Respondent on November 12, 2003.
5. Factual Background
The Complainant or related companies own numerous trademark registrations for the mark VOGUE in all 42 (now 45) classes of goods and services worldwide. The trademark VOGUE is registered for goods and services relevant to fashion, clothes, dresses etc.
In China, where the Respondent resides, there are registrations for the mark VOGUE and other marks including the word "vogue." However, these registrations are in the name of ‘Les Editions Condé Nast S.A.’ or ‘Les Publications Condé Nast S.A.’
Through an associated company, Condé Nast Publications Inc. (Condé Nast), the Complainant publishes such well-known magazines as VOGUE, Glamour, The New Yorker, Self, Vanity Fair and GQ.
Launched in 1892, VOGUE is a major fashion and style magazine for women. The U.S. edition of VOGUE reaches an average monthly audience of over 1,100,000. VOGUE is published in many countries through subsidiaries or licensees.
In the Complainant’s opposition against the registration of the trademark "V IN VOGUE" in Class 25, on appeal, China’s Trademark Review Adjudication Board ("TRAB") (the highest authority in trademark opposition cases in China) ruled 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 VOGUE." (see TRAB’s decision of April 26, 2001). The Complainant in that TRAB proceeding was not the Complainant in this present administrative proceeding but the registered owner of the Chinese trademark, "Les Editions Condé Nast S.A."
Either in its own name or in the name of affiliates and licensees, the Complainant owns numerous domain names, incorporating the word "vogue," including <vogue.com>.
On November 27, 2002, Counsel for the Complainant issued a "cease and desist" letter to the Respondent by email and registered post explaining the Complainant’s rights and requesting cancellation or transfer of the disputed domain name.
On December 18, 2002, Counsel for the Complainant wrote to the Respondent pressing for a reply. After receiving no response, on January 7, 2003, Counsel for the Complainant communicated with the Respondent by telephone at the number shown in the register WHOIS database. A Mr. Wang answered the phone and claimed that he had not received the "cease and desist" letter. Counsel for the Complainant re-sent the "cease and desist" letter by email to the email address provided by Mr. Wang. A separate email dated January 7, 2003, was sent to Mr. Wang seeking compliance. Mr. Wang acknowledged receipt of these messages, but indicated he needed time to consider them.
On April 30, 2003, Counsel for the Complainant communicated with Mr. Wang by telephone. Mr. Wang refused to comply with the Complainant’s demands, although the Respondent was not able to submit any proof of its entitlement to use or register the domain names "vogue" or "voguedress."
The Respondent’s website lists information about contact details of fashion and clothing accessories for both suppliers and buyers. On a free website, accessed by the disputed domain name, the Respondent provides banners and links to other commercial websites at the foot of its front page. The links change, but some lead to pornographic websites. Although the website itself is not pornographic, at least one of the links, at any time, can refer to a pornographic site.
6. Parties’ Contentions
The disputed domain name consists of the Complainant’s trademark VOGUE and the word "dress." The former is the distinctive part of the domain name whereas the latter is a generic term. The mere addition of a generic term to a trademark does not remove confusion nor is any new or original distinctive domain created thereby. See Advance Magazine Publishers Inc. v. Vogue International, 123 F. Supp. 2d 790 (D.N.J 2000), finding the domain names <teenvogue.com>, <teenvogue.net>, <vogueinternational.com> confusingly similar to the Complainant’s "highly distinctive and famous" VOGUE mark.
Given the worldwide reputation of the Complainant’s VOGUE mark, consumers who view the disputed domain name will recognize the VOGUE mark and assume that it may be linked to a website related to other VOGUE websites and/or to goods and services provided under the VOGUE mark.
The Respondent has no rights or legitimate interests with respect to 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 with a bona fide offering of goods and services.
The Respondent has no VOGUE trademark registration nor trade name, nor has it been commonly known by the disputed domain name. The Respondent has no legitimate rights or interest in the disputed domain name.
When considering whether a Respondent has registered a disputed domain name in bad faith, prior WIPO panels have found that where the trademarks concerned were famous, the Respondents should have known of the Complainant’s trademarks when registering the disputed domain names and hence the registration was made in bad faith. See, e.g., VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040, Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157 and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137.
WIPO panels also found that such conduct suggested "opportunistic bad faith." See, e.g. Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157 and Parfums Christian Dior v. Javier Garcia, WIPO Case No. D2000-0226.
In this case, given the longstanding use and fame of the VOGUE trademark, particularly in China where the Respondent resides, the Respondent should have known of the same when registering the disputed domain name.
The Respondent’s linking of a "non-profit making" website incorporating the VOGUE mark to adults’ websites, seriously tarnishes the fame of the VOGUE mark and dilutes it. The Respondent uses the Complainant’s famous mark in its domain name to attract numerous traders in the fashion business to visit its site, so that it can generate profits by providing links to other unrelated and even pornographic websites. The Complainant relies upon the decisions in CCA Industries Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148, Nokia Corporation v. Nokia girls.com a.k.a. IBCC, WIPO Case No. D2000-0102 and America Online Inc. v. Viper, WIPO Case No. D2000-1198, as showing that this is, in itself, evidence of bad faith.
The Respondent would have been better served by registering an alternative domain name that would have been more appropriate for conveying the Respondent’s ideas (for example, a domain name connoting sexual content). The fact that the Respondent has elected to register a domain name comprising the VOGUE mark indicates that it made deliberate intention to mislead consumers into believing there was a connection with the Complainant.
The Respondent’s registration of the disputed domain name, incorporating the VOGUE mark, would attract visitors to visit the website who would not otherwise have visited the site, had they known that the disputed domain name was unconnected with the Complainant. The Respondent has sought commercially to benefit from traffic generated to the website as a result of such consumer confusion.
The true Respondent should be Guangdong Puning Science and Technology Consultancy & Service Company (the Puning Company) for which Mr. Wang Hanzhong (Computer Dazhong is his pseudonym) has acted as legal representative and has registered, held and maintained the disputed domain name for and on behalf of Puning Company. Therefore, in the Response, Puning Company and Mr. Wang Hanzhong are interchangeable.
The Puning Company was lawfully registered on July 20, 1989, by the Administration of Industry and Commerce of Puning City, Guangdong. On July 30, 2002, Mr. Wang Hanzhong was appointed as General Manager and Legal Representative.
The main statutory business scope of the Puning Company is: science and technology consultancy, training, transfer, service, importation, civil engineering and mechanical design among which internet application business falls into the scope.
The main business with which the Puning Company is involved is setting-up websites, i.e. designing webpages and, maintaining websites. For the purpose of business promotion the Puning Company has established various websites free of charge, including a website accessed through the disputed domain name. This website gives information about vogue dress and dress machines.
Because it is meant to be a website in respect of dress, the Puning Company picked out a simple Chinese phrase "Shi Shang Fu Shi" for the website. Because international domain names are limited to English, the Puning Company had to translate the Chinese Phrase "Shi Shang Fu Shi" into an English one: i.e. "vogue dress." ‘Dress’ is the headword, ‘vogue’ modifies dress. When registering the domain name, the Puning Company was not aware of the fact that the VOGUE was a trademark in China.
Although the <voguedress.com> website is a free ad service platform for enterprises, the Puning Company has put time, effort and money into maintaining and servicing the website. To promote the website, the Puning Company spent 10,000yuan RMB on registering 20 Chinese Keywords in relation to "vogue dress." As a result, the public can promptly access the website through Chinese Keywords for vogue and dress in various search engines.
The Voguedress website is attracting more and more people to its website. Since October 29, 2002, manufacturers, agents, buyers all over the country publish their information on <voguedress.com> nearly every day. As at September 28, 2003, the number of enterprises publishing commodity information approached 700. Consequently, the Puning Company has become well-known across China.
Both "vogue" and "dress" are generic terms: The statement of "the mere addition of a generic term of the Complainant’s trademark does not remove confusion nor is any new or original distinctive domain created thereby" is incorrect. "Vogue" is merely an adjective. Without it, the word ‘dress’ is still meaningful. If the disputed domain name were changed into <dress.com>, the meaning would be complete, distinct and novel, and would reflect the characteristic of the dress trade. Therefore, based on this comparison, vogue is less important and distinctive than dress.
American domain name judgements are inapplicable to this case. In <teenvogue.com> ‘teen’ is a modifying word, the headword is ‘vogue.’ Stress is placed on "vogue," which is quite different from this case where stress is placed on ‘dress.’ In <vogueinternational.com> the headword is still vogue, "international" modifies "vogue."
On the webpage of "www.vogue.com" are "www.vogue.com," "www.vogue.es," and other national websites. In addition, every page is typeset and filled with colorful pictures of movie stars, models and products. The consumer can never link this site with VOGUE. "voguedress" is typeset in simple, rough style.
The mark VOGUE, using English, French, Spanish, German, Italian and Japanese, cannot be confusingly similar with <voguedress.com> using Chinese.
The Complainant is a New York company Advance Magazine Publishers Inc. The Complainant claimed that the Complainant owned numerous trademark registration for VOGUE in all 45 classes of goods and services worldwide in the name of the Complainant and its affiliated companies in the Condé Nast Group of companies. The Complainant further claimed that through its "unincorporated division" the Condé Nast Publications Inc, the Complainant published such well-known magazines as VOGUE and together with its affiliates and licensees, the Complainant owned numerous domain names in relation to VOGUE.
There is no evidence indicating the relationship between the Complainant and those affiliated companies and licensees. In fact, the Complainant has only registered a portion of trademarks for VOGUE: the rest of VOGUE trademarks are owned by other companies. Unless there is evidence to the contrary establishing the legal relationship between the Complainant and those companies, the Complainant does now own all the VOGUE trademarks, therefore the Complaint is defective.
The disputed domain name is not confusingly similar to the mark VOGUE because:
(a) The former is a compound word of vogue and dress, the letter is single word;
(b) The former is an adjective, the latter is a noun;
(c) Vogue is adjective modifying dress, and it is meaningless without the word dress.
(d) The former refers to faddish, trendy and stylish dress, the latter to fashion, style.
The Decision of the TRAB invoked by the Complaint is in nature an "Administrative Internal Reply." The recipients of this Decision are the Patent and Trademark Firm of China Council for Promotion of International Trade and the Suzhou Trademark Firm. The Respondent is not the recipient; therefore, it has no obligation to know the content of the Decision. In addition, this Decision cannot replace a Well-Known Trademark Certificate and cannot prove that VOGUE is a well-known trademark in China, known to the public including the Respondent.
Without giving any proof regarding "the longstanding use and fame of VOGUE in China," the Complainant alleged that "given the longstanding use and fame of the Complainant’s VOGUE trademark, particularly in China where the Respondent resides, the Respondent should have known of the same when registering the disputed domain name."
The Complainant invoked 5 WIPO cases to illustrate that "where the trademarks concerned were famous, the Respondent should have known of the Complainant’s trademarks when registering the disputed domain names and hence the registration was made in bad faith and is ‘opportunistic.’" These cases cannot prove that the Respondent’s registration is in bad faith. The Policy has not recognized that WIPO decisions can be served as case law. WIPO previous decisions invoked by the Complainant are not binding upon this case.
The situations in those decisions are inapplicable to this case. In WIPO Case No.D2002-1040, the panel held that the trademark VEDA is known well enough in the computer and Internet world and that it was presumed that Respondent knew of it when registering the domain name. Unlike VEDA, VOGUE is not known well enough in the computer and Internet world. It is not a well-known trademark in China. In addition, unlike the Respondent who directly registered <veda.com> in that case, this Respondent did not register <vogue.com> directly; the Decision is inapplicable to this case.
In WIPO Case No. D2000-1157, the panel held that the Respondent, an Italian citizen, knew of the Italian bank BANCA SELLA (which had been operating under the trade name BANCA SELLA since the 19th Century) when he registered the domain name. This suggested opportunistic bad faith. The Complainant has not given proof of its other allegations under this heading.
The main purpose of the Respondent’s registration of the disputed domain name is to provide a free ad service platform for the Puning company and the domestic dress industry. The circumstances stipulated in paragraph 4(b)(i) of the Policy do not exist.
The Complainant’s allegation that "the Respondent knew of the Complainant’s VOGUE trademark when registering the disputed domain name" is incorrect because:
(a) The Complainant has not provided any direct evidence proving that on and prior to registering the disputed domain name, the Respondent had to be aware of the Complainant’s trademark, hence, registration of the domain name was not made in bad faith.
(b) VOGUE although a registered trademark in China, is not a well-known trademark there. It is an ordinary English word. In China, where English is not an official language, there is no reason to allege that, when registering the disputed domain name, the Respondent should have known of the VOGUE trademark in its English version.
(c) The Decision Concerning Opposition Against Trademark "V IN VOGUE" made by TRAD and invoked by the Complainant does not establish that VOGUE is a well-known trademark across China. There is no reason for the Complainant to allege that, as a Chinese citizen, the Respondent should have known VOGUE prior to and at the time of registering domain name because:
(i) According to Article 1 of the Regulation on Recognition and Protection of Well-Known Trademarks promulgated by the TRAB, "well-known trademark" refers to a trademark which enjoys high reputation and is known widely by the public in China. Pursuant to this Regulation, in China, a well-known trademark must be recognized by the Trademark Office of the State Administration of Industry and Commerce. Without this procedure, any trademark cannot be a well-known trademark.
(ii) Customers of <voguedress.com> are domestic enterprises across mainland China. No evidence exists that customers who originally were customers of the VOGUE trademark but because of confusion in visiting the disputed domain name’s website, eventually became customers of <voguedress.com>.
(d) No proof has been provided by the Complainant that "consumers who view the disputed domain name will instantly recognize the VOGUE mark and assume that it may be linked to a website related to the other VOGUE website as stated above and/or to the goods and services provided under the VOGUE mark." The Respondent is a lawfully registered science and technology consultancy and service company. Prior to January 7, 2003, when the dispute arose, the Respondent had set up three free science and technology websites including one at the disputed domain name.
(e) To promote and maintain the free website, the Respondent has paid a large amount of money registering Chinese Keywords to enable the website to be accessible to the public more conveniently and promptly. Chinese customers support the disputed domain name. The Respondent has become well-known by the public due to the domain name. It is a completely free service and no profits have been generated. The act of the Respondent complies totally with the business scope and orientation of the Puning Company. All the information published on the disputed domain name website is entirely true, and does not mislead consumers or tarnish the VOGUE trademark.
Apart from the allegations "The Complainant never granted the Respondent the right to use or register the VOGUE trademark, and the Respondent does not have any VOGUE trademark registration," the Complainant has not provided evidence denying that the Respondent has rights or legitimate interest in respect to the disputed domain name. The allegations of the Complainant are groundless. Pursuant to paragraph 4a(ii) of the Policy, the burden of proof regarding whether the Respondent has rights or legitimate interests in respect of disputed domain name is borne by the Complainant.
(f) As to the Complainant’s allegation that "the Respondent generates profits by providing the links to other unrelated and even immoral and obscene websites that are pornographic in nature":
(i) The aim and purpose of <voguedress.com> is to set up a free ad service platform for Puning and the domestic dress industry. Any enterprise information published on the website is healthy and positive, not immoral and obscene.
(ii) Reason 2: at the outset when the website was built, in order to survey the visits made by consumers, the Respondent employed a free internet statistics software named "Taiji Link" to conduct the survey. Such software contained an ad link, when using the software, the ad link would show up automatically on the front page. When the Respondent found out that "Taiji Link" involved adult content, which went against the aim and purpose of the Respondent’s website, the Respondent removed the software immediately. This situation lasted about 60 days, in which the Respondent had not gained commercially. Therefore, the Complainant’s allegation that "the whole purpose of the Respondent is to use the Complainant’s famous mark in its domain name to attract numerous traders in the fashion business to visit its site, so that it can generate profits by providing the links to other unrelated and even immoral and obscene websites that are pornographic in nature" is incorrect.
(g) The Complainant invoked WIPO Decisions to prove the above acts of the Complainant are in bad faith. However, as explained before, these Decisions are not binding upon this case, and the situations in those decisions are inapplicable to this case too i.e. in WIPO Case No. D2000-0148, the panel ruled that "…registering many names (by the Respondent) to identify pornography websites make it likely that he will use the domain name <bikinizone.com> to identify a pornography website…" In WIPO Case No. D2000-1198, the panel held that "the Respondent has established a website at "aolgirls.com" to offer pornographic materials. The fact…to be evidenced of bad faith." As clearly shown in these Decisions, the Respondent deliberately registered the disputed domain name to offer pornographic service. This case is different because the purpose of the Respondent in registering the disputed domain name is to offer a free ad service for Puning and the domestic dress industry.
7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- 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
- that the Respondent has no legitimate rights or interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of the Respondent’s residence.
Trademarks on which the Complainant relies are registered in China – not in the name of the Complainant – but in the names of "Les Editions Condé Nast S.A." or "Les Publications Condé Nast S.A." The Complainant says in its Complaint that trademarks worldwide are owned worldwide "in the name of the Complainant and/or its affiliated companies in the Condé Nast Group of companies …" Also "The Condé Nast Publications Inc," the publisher of Vogue magazine is described as ‘an unincorporated division’ of the Complainant. This latter statement is difficult to accept because the suffix ‘Inc.’ usually indicates incorporation in the United States, just as the suffix ‘S.A.’ indicates incorporation in French-speaking countries.
It may well be that the Complainant and the registered owners of the Chinese trademarks are associated companies or that the registrants are subsidiaries of the Complainant. That is not the same thing as saying, as the Policy requires, that the Complainant has rights in marks, registered in the name of a Condé Nast company – probably registered in France (if the ‘S.A.’ suffix is anything to go by). In the absence of any proof of an assignment of or license over the Chinese trademarks from the registrants – the Condé Nast companies to the Complainant, the Panel cannot infer that the Complainant has rights to the marks registered in China. See UBS AG and Ospel v. has Book Publishers Inc., WIPO Case No. D2001-0637 and WIPO Case No. D2001-0639.
Nevertheless, in the Panel’s view, the disputed domain name is confusingly similar to the numerous marks registered in many other countries in the name of the Complainant for the word "Vogue." The word ‘vogue’ – through the worldwide fame of the mark is associated with fashion. The word ‘dress’ is complementary to the word ‘vogue’ which is indicative of dress and dress-sense. Despite the lack of a Chinese registration in the name of the Complainant, the fame of the mark is such as to make the disputed domain name confusingly similar to marks in other countries in which the Complainant has trademark rights. The quotation from the TRAB decision cited by the Complainant supports the reputation of the mark in China, even though Chinese mark is not registered by the present Complainant.
Legitimate Rights & Interests / Bad Faith
The Complainant gave the Respondent no rights in the disputed domain name. Therefore, it is for the Respondent to show it comes within one of the exceptions in paragraph 4(c) of the Policy.
The Respondent claims that before it had notice of the dispute (i.e. January 7, 2003) it had established a legitimate business and had set up a website giving information about "vogue dress and dress machines." He claims to have picked a Chinese phrase which translates into English as "voguedress."
He asserts that previous WIPO decisions are not binding on this Panel. That statement is technically correct. However, in order to maintain certainty and consistency, WIPO panels give great respect to previous decisions and follow them whenever appropriate. The decisions cited by the Complainant accord with the Panel’s views.
Any decision on the Respondent’s rights and legitimate interests must be taken in conjunction with a decision on whether the disputed domain name was registered by him in bad faith as was said by the panelist in Marconi Data systems Inc v IRG Coins & Ink Source Inc., WIPO Case No. D2000-0090: "One who has constructive knowledge of the trademark, and who contacts the trademark owner and advises the owner that he has acquired a confusingly similar domain name which he intends to use in competition with the trademark owner has no rights to legitimate interests in the domain name." In the present case, Respondent has continued to promote his website despite clear notice of the trademark.
Although the Complainant is not the registered owner of the Chinese-registered marks, the Panel finds it too much of a coincidence that the Respondent should set up a website using the words ‘vogue’ and ‘dress’ to offer information on dress and dress machinery.
The name "vogue" is synonymous with "fashion" and is so recognized world-wide. Any website bearing the name ‘vogue’ in combination with the word ‘dress’, would lead most users of the internet to think that they were dealing with someone with a connection with the worldwide Vogue fashion empire.
These facts demonstrate use of the domain name of the type contemplated by paragraph 4(b)(iv) of the Policy and are accordingly evidence of registration and use of the domain name in bad faith.
The following supplementary matters confirm the bad faith finding:
(a) The ability for users of the website of the disputed domain name to click onto a pornographic site. Whether that situation now exists does not matter. It was obtained when the website was set up.
(b) The failure of the Respondent to be registered in either his own or his company’s name as owner of the disputed domain name. He has acknowledged that he has used a pseudonym. One has to ask why this was done if the business were legitimate.
The Panel considered therefore that the Respondent has no rights or legitimate interests to the disputed domain name and that the domain name was registered and used in bad faith.
For the foregoing reasons, the Panel decides:
(a) That the domain name <voguedress.com> is confusingly similar to trademarks in which the Complainant has rights.
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <voguedress.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Mr. Yong Li
Dr. Hong Xue
Dated: December 12, 2003