The Complainant is Advance Magazine Publishers Inc. of New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
The Respondent is Moniker Privacy Services; Registrant, Registrant firstname.lastname@example.org / Registrant of Florida, United States of America; Hong Kong, SAR of China, respectively.
The disputed domain name <detailsmagazine.com> (“Domain Name”) is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2009. On June 18, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On June 18, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 23, 2009. 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” or “UDRP”), 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 June 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 16, 2009.
The Center appointed David Taylor as the sole panelist in this matter on July 22, 2009. The Panel finds that it was properly constituted. 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 factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto.
The Complainant is Advance Magazine Publishers Inc., a magazine publisher incorporated under the laws of the United States (“US”). Through its unincorporated division, The Condé Nast Publications Inc., the Complainant publishes magazines such as The New Yorker, Glamour or Vogue.
In 1982, the Complainant launched a men's fashion and lifestyle magazine called “Details” which has since become one of the world's major men's magazines. The magazine Details reaches an average monthly audience of over 440,000 in the United States.
The Complainant owns numerous trade marks in the term DETAILS, including for instance, the following trade marks:
- US trade mark DETAILS, registration number 1,229,755, registered on March 8, 1983, in class 16;
- US trade mark DETAILS, registration number 2,059,160, registered on May 6, 1997, in class 9;
- US trade mark DETAILS, registration number 3,525,871, registered on October 28, 2008, in class 35;
- Hong Kong SAR of China trade mark DETAILS, registration number B1194/91, registered on February 26, 1988.
The Complainant is the registrant of the domain name <details.com> which directs users to the URL address “www.men.style.com”, the main website of the magazine “Details”.
The Respondent registered the domain name on December 4, 2002. The Complainant asserts that in October 2008, it discovered that the domain name <detailsmagazine.com> had been registered by the Respondent. On October 15, 2008, the Complainant sent a cease and desist letter via email to the Respondent but received no reply from the Respondent.
Prior to initiating these proceedings, the Complainant sent a further warning to the Respondent to which the Respondent never replied. The Complainant considered a further attempt at contacting the Respondent by sending a cease and desist letter via postal mail but realised that the address used for the registration by the Respondent was incomplete or possibly incorrect. Therefore the Complainant inquired with Hong Kong counsel as to the validity of the postal address. According to the Complainant the counsel concluded that the address was “at best incomplete and at worst misleading”.
The Complainant asserts that on or about November 5, 2008, the registrant of the Domain Name changed from FashionID.com to Moniker Privacy Services. Following the Respondent's failure to reply, the Complainant sent a final email to FashionID.com on June 3, 2009, giving notice to the Respondent that if it did not receive any answer by June 8, 2009, it would file a complaint pursuant to the Uniform Domain Name Dispute Resolution Policy.
Since the Complainant never received a reply by the set deadline, the Complainant filed the present UDRP Complaint.
(i) The Complainant contends that the Domain Name is confusingly similar to the Complainant's mark.
The Complainant asserts that the Respondent registered a domain name which identically reproduces the Complainant's trade mark in the term “Details” with the addition of the generic word “magazine”, without any legitimate justification. It is the Complainant's view that the registration of the Domain Name has led or will lead to consumer confusion.
Invoking its worldwide reputation, the Complainant asserts that a consumer viewing the Domain Name would instantly recognize its DETAILS brand. Furthermore, the Complainant contends that a consumer would assume that the Domain Name links to a website published by the Complainant or that users of e-mail addresses which contain “@detailsmagazine.com” are employees of the Complainant. The Complainant thus considers that the Domain Name is confusingly similar to its trade marks in the term “Details”.
(ii) The Complainant also contends that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant submits that it never granted the Respondent the right to use or register the DETAILS mark, either in connection with a domain name registration or a bona fide offering of goods and services or for any other reason.
The Complainant points out that prior to its registration of the Domain Name, the Respondent had no legitimate use or right to make use of the DETAILS mark.
The Complainant considers that the Respondent's failure to reply to the Complainant's cease and desist mail and further warnings indicates that the Respondent could not prove any legitimate rights or interests in the Domain Name.
(iii) The Complainant contends that the Domain Name was registered and is being used in bad faith under the criteria set forth in paragraph 4(b) of the Policy.
According to the Complainant the Domain Name was registered for commercial gain and to trade on the Complainant's goodwill. It is the Complainant's view that the Respondent was aware that consumers viewing the Domain Name and the associated email addresses would expect to be directed to a website associated with the Complainant's magazine and the email addresses to be authorized by the Complainant.
In addition, the Complainant's asserts that, as far as the website available at the URL <detailsmagazine.com> is concerned, the fact that the website contains “pay-per-click” links regarding magazine subscription, including one labelled “Details Magazine”, is a further indication of the Respondent's bad faith.
For all the foregoing reasons, the Complainant requests that the Domain Name be transferred to it.
The Respondent did not submit any response to the Complainant's contentions.
Paragraph 15(a) of the Rules states that a panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In the case of default by a party, paragraph 14 of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it deems appropriate. In this case, the Respondent has not submitted any Response and consequently, despite the opportunity given, has not contested any of the contentions by the Complainant. The Panel will therefore have to proceed on the basis of the factual statements contained in the Complaint and the documents available to support the contentions.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) the Domain Name registered to the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Taking each of these issues in turn, the Panel decides as follows:
The first element that needs to be satisfied is whether the Complainant has rights in the term “Details”.
The Complainant submits evidence that it has rights in the term “Details” in the United States. The Complainant also states that it owns many registered trade marks in the term “Details” worldwide, including Hong Kong, SAR of China where one of the Respondents appears to be based. Therefore, based on the evidence produced, the Panel finds that the Complainant has rights in the DETAILS.
The second element to be satisfied is whether the Domain Name is identical or confusingly similar to the term DETAILS in which the Complainant has rights.
The Domain Name wholly incorporates the Complainant's trade mark in the term DETAILS. It differs from the mark merely by the addition of the descriptive word “magazine”. The Panel finds that this addition can be seen as a description of the exact product that DETAILS is associated with and reinforces the connection to the Complainant's trade mark (see The Condé Nast Bridal Group, Inc. v. Trademark, WIPO Case No. D2006-0452).
In Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, the Panel expressed the view that “a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non distinctive matter to it”. Applying this reasoning, the Panel finds that the Domain Name is confusingly similar to the DETAILS trade mark.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
The Complainant must establish that the Respondent has no right or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out various ways in which the Respondent may demonstrate rights or legitimate interests in the Domain Name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel considers that the Complainant has presented a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name.
No evidence was submitted by the Respondent to suggest that the Complainant granted an authorization to the Respondent as to the right to use or register the DETAILS term. Similarly no evidence was submitted to suggest that the Respondent has ever been commonly known by the Domain Name or that the Respondent had made, prior to the registration of the Domain Name, any use or preparation to use the Domain Name in connection with a bona fide offering of goods or services.
In addition, the website available at the URL “www.detailsmagazine.com” contains “pay-per-click” links regarding magazine subscription as well as hyperlinks to other third parties websites. The Panel considers that the website was created with a view to generating commercial gain, using a “pay-per-click” scheme, by misleading consumers to believe that the Domain Name pointed to a website published by or otherwise associated with or endorsed by the Complainant. Such use does not constitute fair use of the Domain Name.
Furthermore, the Panel considers that the Respondent's failure to respond to the warnings sent by the Complainant and failure to respond to this Complaint is a further element suggesting the lack of rights and legitimate interests in the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant must prove that the Domain Name has been registered and is being used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of the Domain Name in bad faith, as follows:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In view of the fact that the term DETAILS was registered as a trade mark by the Complainant in 1983 in the US and 1988 in Hong Kong, SAR of China and that the Complainant's trade marks have since acquired significant goodwill and notoriety, it is inconceivable that the Respondent would not have been aware of the Complainant's trade mark and magazine at the time of the Domain Name registration. The choice by the Respondent of the DETAILS trade mark, plus the descriptive word “magazine”, of itself demonstrates this.
This is further supported by the fact that the content of the website to which the Domain Name points is mainly targeting services and goods which are in competition with the Complainant's activities. The Panel is therefore satisfied that the Respondent did not register the Domain Name in good faith.
Concerning use of the Domain Name in bad faith, the Panel considers that the Domain Name is being used to attract consumers and make a commercial gain by providing links to third parties' websites through a “pay-per-click” scheme thereby taking advantage of the goodwill and the likelihood of confusion with the Complainant's trade mark. The Panel therefore considers that the Respondent has used the Domain Name in bad faith.
In addition, the Panel is of the view that the Respondent's failure to reply to the Complainant's cease and desist letter and further notices is an additional indication of bad faith.
The Panel finds further suggestion of bad faith in the fact that the Respondent used a domain privacy service. Indeed, even if it is difficult to ascertain from the case file what happened exactly in terms of change of registrant of record, this case highlights the difficulty caused by the use of privacy services. Whilst such services can obviously serve legitimate and useful purposes such services can and seem to be increasingly used in order to disguise the true identity of the registrant with a view to evading the enforcement of legitimate third party rights. Such use of privacy services evidently constitutes a bad faith conduct (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service Inc., WIPO Case No. D2004-0453 and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743). Beyond the context of the present administrative proceedings it is a growing concern that privacy services are increasingly used to shield illegal activities such as cybersquatting. The Panel note that some estimates put the number of “.com” and “.net” domain names using privacy services at 25 percent today. Even though registrants remain responsible for the lawful use of their domain names as per paragraph 2 of the Policy some registrars clearly benefit from such illegal use of the privacy services they provide and should not be exempted from any responsibilities in such instances.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(a) of the Policy.
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 <detailsmagazine.com> be transferred to the Complainant.
Dated: August 5, 2009