WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany

Case No. D2004-1068

 

1. The Parties

The Complainant is Advance Magazine Publishers Inc., New York, New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.

The Respondent is Vanilla Limited, Singapore, Singapore; Domain Finance Ltd., Sharjah, United Arab Emirates; and Minakumari Periasany, Singapore, Singapore, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Names and Registrars

The disputed domain names;
<californiavogue.com>
<canadavogue.com>
<dubaivogue.com>
<floridavogue.com>
<francevogue.com>
<hindustanvogue.com>
<hongkongvogue.com>
<indianavogue.com>
<iranvogue.com>
<italiavogue.com>
<italyvogue.com>
<japanvogue.com>
<mexicovogue.com>
<newyorkvogue.com>
<pakistanvogue.com>
<riovogue.com>
<ingaporevogue.com>
<voguebride.com>
<voguebrides.com>
<voguevanity.com>
<voguevisas.com>
<washingtonvogue.com>
<washvogue.com> are registered with BulkRegister.com. (the “Disputed Domain Names”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2004. On December 17, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain names at issue. On December 20, 2004, BulkRegister.com 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 Center verified that 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 January 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was originally February 2, 2005. The extended Response due date was February 16, 2005. The Response was filed with the Center on February 17, 2005.

The Center appointed Alistair Payne, David H. Bernstein and David E. Sorkin as panelists in this matter on March 18, 2005. 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. The Panel finds that each of the Disputed Domain Names is held by the same entity, namely, the Respondent.

By email dated March 7, 2005, the Complainant’s representative requested permission to amend the Complaint so as to include newly registered domain names registered by the Respondent that came to its attention after the submission of the Complaint. The Panel declines this request, because in the Panel’s view, it would lead to an unacceptable delay in resolving the Complaint while the process of Registrar Verification was undertaken and the Respondent was given a further opportunity to respond to the amended Complaint. The Complainant is free to file a new Complaint in respect of these new domain names as it sees fit.

 

4. Factual Background

The Complainant is a successful magazine publisher and has submitted evidence that it is the owner hundreds of trade mark registrations throughout the world for the VOGUE mark. Through its Condé Nast Publications division, it publishes well-known magazines including “Vogue” and “Vanity Fair”. Vogue magazine has a wide circulation in many parts of the world, including, the US, United Kingdom, France, Germany and Japan. It is also extensively published and promoted by the Complainant via the World Wide Web.

The Respondent is a subsidiary of WorldNews Inc. It states that it uses the Disputed Domain Names in connection with its WorldNews network of web sites. The Respondent claims that the Disputed Domain Names were registered with the intent to use “vogue” in a descriptive sense for websites featuring the latest trends in the geographic areas referred to in the domain names. The website operated by the Respondent – “www.worldnews.com” – receives approximately 12 million visitor sessions per month and has been featured in the Forbes magazine and the Entrepreneur Magazine. The Respondent states that it is a serious web operator and that it has invested “tremendous” capital and resources in website development.

On January 27, 2004, and February 25, 2004, the Complainant’s representative sent an email communication to the administrative contact of the Respondent complaining about the Respondent’s registration of <japanvogue.com> as a domain name, which had come to its attention. The Respondent replied stating that it was in the process of developing an information website for its client Japan Veritas Off-Shore Geophysical Underwater Eng. (which abbreviates to “japanvogue”).

The Complainant subsequently became aware of the registration of other domain names by the Respondents incorporating the word “VOGUE” together with a geographical designation. On August 10, 2004, the Complainant’s representative sent an email to the administrative contact of these domain names asserting the Complainant’s trade mark rights and requesting transfer of the said domain names. The Complainant states that it received no response to this email and as a consequence decided to file the Complaint.

 

5. Parties’ Contentions

A. Complainant

Whether the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

The Complainant contends that it has established legal rights, including a worldwide reputation, in the word “VOGUE” on the basis of its ownership of numerous registered trade marks incorporating that word and the publication of numerous international editions of Vogue Magazine. In support of this contention it cites the decision in Advance Magazine Publishers, Inc. v. Models USA Inc, WIPO Case No. D2002-0907 (December 19, 2002), where a Panel held that domain names, including <voguebritain.com> and <voguecanada.com>, were confusingly similar to the VOGUE trade mark.

The Complainant further contends that the Disputed Domain Names are confusingly similar to the VOGUE mark in which it has rights.

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names. In particular, it states that the Respondent has no legitimate right to use the VOGUE mark. Furthermore, the Complainant contends that the Respondent’s statement that it registered <japanvogue.com> because it represented an abbreviation of one of its client name lacks credibility.

The Disputed Domain Names were registered and are being used in bad faith

The Complainant contends that the Respondent registered and is using the Disputed Domain Names in bad faith. It contends that the Respondent registered the Disputed Domain Names for commercial gain and to trade on the Complainant’s goodwill. As evidence of bad faith, the Complainant cites the Respondent’s practice of registering numerous domain names incorporating the word “VOGUE”.

The Complainant claims that following its own investigations, it discovered that the Singapore address supplied by the Respondent to Bulk Register is in fact for an uninhabited premises owned by the “Chinese Women’s Association”, which it claims is unrelated to the Respondent. The Complainant contends that this implies that the Respondent supplied false information to Bulk Register and therefore amounts to further evidence of bad faith.

B. Respondent

The Disputed Domain Names are identical or confusingly similar to the trade mark or service mark in which the Complainant has rights

The Respondent contends that the Disputed Domain Names comprise of a common English word – “VOGUE” together with different descriptive and geographic words. In addition, it states that there are numerous other US registered trade marks that include the word “VOGUE”. The Complainant maintains that web users who are searching for the Complainant in a particular region are likely to type in <vogue.com> or <vogue.co.jp> (in the case of Japan) if they were seeking to locate the website of the Complainant in that region. On this basis, it argues that the Disputed Domain Names are not confusingly similar to the Complainant’s mark.

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names

The Respondent contends that it has a legitimate interest in the Disputed Domain Names on the basis that they all incorporate the common English word “vogue” together with a descriptive modifier. In support of its contention, it cites a number of Panel decisions, including HP Hood LLC v hood.com, NAF Case No. 313566, which the Respondent contends establish that the first person to register in good faith a generic term has ipso facto a legitimate interest in that term.

The Respondent also contends that the fact that it uses the Disputed Domain Names as part of its <worldnews.com> network of web sites, supports a finding that it has a legitimate interest in respect of the Disputed Domain Names.

The Disputed Domain Names were registered and are being used in bad faith

The Respondent contends that the Complainant has presented no evidence that the Respondent has intended to create consumer confusion as required by paragraph 4(b)(iv) of the Policy. It states that it is an undeniable fact that “vogue” is a common word and that is why the Respondent registered the Disputed Domain Names. It claims that there is no proof that it registered the Disputed Domain Names with the Complainant’s trade mark in mind.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case the transfer of the Disputed Domain Names to the Complainant), the Complainant must prove each of the three elements referred to in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has provided substantial evidence that it has registered trade mark and common law rights in the VOGUE mark. In the Panel’s view, each of the Disputed Domain Names is without question confusingly similar to the Complainant’s VOGUE mark.

The addition of a geographic modifier (as is the case with <canadavogue.com>, <dubaivogue.com>, <floridavogue.com>, <francevogue.com>, <hindustanvogue.com>, <hongkongvogue.com>, <indianvogue.com>, <iranvogue.com>, <italiavogue.com>, <italyvogue.com>, <japanvogue.com>, <mexicovogue.com>, <newyorkvogue.com>, <pakistanvogue.com>, <riovogue.com>, <singaporevogue.com> and <washingtonvogue.com>) does not in any way remove or dilute the likely confusion that arises from the registration of these domain names. Similarly, the addition of purely descriptive modifiers (as with <voguebrides.com>, <voguevanity.com>, <voguevisas.com> and <washvogue.com>) in no way diminishes the likelihood of confusion arising.

B. Rights or Legitimate Interests

The burden of proof rests with the Complainant to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Names. Paragraph 4(c) of the Policy lists three non-exhaustive factors by which the Respondent may show that it has rights or legitimate interests in the Disputed Domain Names.

The Respondent asserts that the word “vogue” is in common usage in the English language and that a legitimate interest in such words is established where the Respondent in good faith is the first person to register that word. In the Panel’s view, these previous decisions are not an authority for finding that a legitimate interest exists where the Disputed Domain Name comprises a common English word in addition to a descriptive modifier and where the evidence suggests that the registration was made with the Complainant’s trade mark in mind.

In particular, the Panel is of the view that a legitimate interest cannot be established where the evidence suggests that registration was for the purpose of benefiting from the Complainant’s trade mark, even where that trade mark can also be used as a common term. In the Panel’s view, the Respondent has failed to rebut the Complainant’s assertion that it registered the Disputed Domain Names for the purpose of taking advantage of the Complainant’s established rights in the VOGUE mark. In the Panel’s opinion the explanation that the Disputed Domain Names were intended to use “vogue” in a descriptive sense for websites featuring the latest trends in the various geographic areas referred to in the domain names, quite simply, lacks credibility. This is especially so bearing in mind the response of the Respondent to the Complainant’s communication concerning the <japanvogue.com> domain name.

As far as the Disputed Domain Names which do not incorporate geographical modifiers namely <voguevisas.com>, <voguevanity.com>, <voguebride.com> and <voguebrides.com>, the Panel finds that based on the Complainant’s strong rights in the VOGUE mark, the Complainant’s pattern of conduct and the Respondent’s failure to demonstrate legitimate interests to each of these domain names, that the Respondent has also failed to successfully rebut the Complainant’s assertion of no legitimate interest in relation to these domain names.

In support of these findings the Panel refers to paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (available at http://www.wipo.int/amc/en/domains/search/overview/index.html#22), which lists ‘status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for’ as factors to be considered in determining whether the Respondent has a legitimate interest in a common term. Reference is also made to the Panel decision in Fresh Intellectual Properties, Inc. v. 800Network.com, WIPO Case No. D2005-0061 (March 21, 2005), where it was held that the WIPO Overview can be regarded as a ‘studied and considered summary of consensus positions’ and as such ought to be considered in a Panel’s deliberations.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Disputed Domain Names have been both registered and used in bad faith by the Respondent.

The finding in relation to the Respondent’s lack of a legitimate interest informs the Panel’s view on bad faith. The Panel infers that the Respondent’s motivation for registering the Disputed Domain Names was so as to take advantage of the Complainant’s rights and reputation in the VOGUE mark for the purpose of diverting traffic to its “www.worldnews.com” web site.

The Panel’s view is supported by the Respondent’s pattern of registering so many domain names incorporating the Complainant’s “VOGUE” mark for no obvious legitimate purpose together with the Respondent’s open admission that it used the Disputed Domain Names for the purpose of diverting traffic to its “www.worldnews.com” web site. Also in support is the Respondent’s provision of false contact information to Bulk Register and the Respondent’s false claim that it registered the <japanvogue.com> domain name on behalf of a client – Japan Veritas Off-Shore Geophysical Underwater Eng. Even though the Respondent has in effect withdrawn this latter statement in a signed declaration submitted as evidence, it remains the case that it is supportive of a finding that, at the time of registration, there was bad faith.

For these reasons, the Panel finds that the Respondent both registered and used the Disputed Domain Names in bad faith contrary to paragraph 4(b)(iv) of the Policy.

 

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 all the Disputed Domain Names be transferred to the Complainant.


Alistair Payne
Presiding Panelist


David H. Bernstein
Panelist


David E. Sorkin
Panelist

Dated: April 18, 2005