WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. HostMonster.com INC / Stephen Lee
Case No. D2010-1355
1. The Parties
The Complainants are Advance Magazine Publishers Inc. of New York, United States of America and Les Publications Conde Nast S.A. of Paris, France, represented by Sabin Bermant & Gould, LLP, United States of America.
The Respondents are HostMonster.com INC of Utah, United States of America and Stephen Lee of Guangzhou, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <voguemonster.com> is registered with FastDomain, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2010. On August 11, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on August 17, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 24, 2010. The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on August 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 15, 2010.
The Center appointed John Swinson, David H. Bernstein and Linda Chang as panelists in this matter on September 29, 2010. 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 first Complainant, Advance Magazine Publishers Inc., is a New York corporation that publishes magazines, including the famous fashion magazine Vogue. The second Complainant, Les Publications Conde Nast S.A., is a French subsidiary of the first Complainant. Both parties shall hereinafter be collectively referred to as the Complainant.
The Complainant owns over 1,000 trademark registrations worldwide, including:
- United States Trademark Registration No. 103770 for VOGUE, registered April 13, 1915; and
- United States Trademark Registration No. 125542 for VOGUE, registered May 20, 1919.
No information was provided about the first Respondent, HostMonster.com INC, although the Panel understands it to be a company that provides web hosting services. No information was provided about the second Respondent, Stephen Lee, other than that he is an individual from Guangzhou, People’s Republic of China. Both parties shall hereinafter be collectively referred to as the Respondent.
The disputed domain name was registered on October 7, 2008. The website resolving from the disputed domain name sells “replica” designer items including clothing, jewelry and handbags.
5. Parties’ Contentions
The Complainant makes the following contentions:
The Complainant publishes well-known magazines, including Vogue, The New Yorker, Vanity Fair and GQ through its unincorporated division, The Conde Nast Publications Inc. These magazines also have an Internet presence. Vogue was launched in 1892 and is the world’s leading fashion and style magazine. The United States edition of Vogue has an average monthly audience of over 1,240,800 readers. Vogue is also published through the Complainant’s subsidiaries or local licensees in numerous countries, including England, France, Brazil, Greece, the Russian Federation, the Republic of Korea, Australia and People’s Republic of China. By way of example, Chinese Vogue has over 577,000 readers each month.
Since 2000, the Complainant has operated the websites “www.vogue.com” and “www.style.com,” which feature fashion show video coverage and Vogue magazine content, as well as advertisements from luxury brand owners. The website at “www.vogue.com” obtains over 7 million page views each month and over 600,000 unique users each month. Related Vogue publications in other countries also have associated websites. The website for Vogue China, “www.vogue.com.cn” averages approximately 20,000 page views each month.
The Complainant owns over 1,000 trademark registrations in connection with magazines and online publications and distribution of information worldwide, including:
- United States Trademark Registration No. 103770 for VOGUE, registered April 13, 1915;
- Canadian Trademark Registration No. TMDA42009 for VOGUE, registered August 3, 1927;
- Chinese Trademark Registration No. 97264 for VOGUE, registered September 29, 1979; and
- Malaysian Trademark Registration No. 98003837 for VOGUE, registered March 28, 1998.
The Complainant also owns related trademarks such as EN VOGUE, MEN’S VOGUE, TEEN VOGUE and VOGUE LIVING.
The website resulting from the disputed domain name sells replica and counterfeit merchandise. The site indicates that it provides “customers worldwide with high quality products at wholesale prices straight from the manufacturer to help you control costs”. The Complainant alleges that this statement is false and that the Respondent has no such relationship with the manufacturers. The Respondent’s website even includes the following statement (copied directly from the website) in its “about returns section” - “I want return, because it’s not authentic: We never said it’s authentic. It’s replica sell store If you only want authentic products, don’t order from the internet”.
The disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name consists of the Complainant’s identical trademark, VOGUE, as well as the word ”monster”. On the website, the Respondent also uses the symbol TM after the word “Vogue” to indicate trademark rights in that portion of the site name. There is no doubt that registration of the disputed domain name will lead to consumer confusion. In view of the Complainant’s world-wide reputation and publication of international editions of Vogue magazines and Vogue websites, consumers who view the disputed domain name and website will instantly recognize the Vogue brand. The Respondent is using the strong reputation of Vogue to lend credibility to its business. The word “monster” in the title underscores the bad faith and deviation from normal behaviour and high quality reputation associated with Vogue.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never granted the Respondent the right to use or register the VOGUE trademark for any reason. Prior to its registration of the disputed domain name, the Respondent had no legitimate use or right to use the VOGUE brand. The Complainant sent a cease and desist notice to the Respondent via the “contact us” form on the Respondent’s website. As of the date of this Complaint the Complainant has not received a response to this notice. The Respondent’s failure to reply to the Complainant’s communications about the disputed domain name indicates that it cannot demonstrate any legitimate rights or interests in the disputed domain name.
The Policy sets out four non-exclusive categories of evidence, any of which “shall be evidence of the registration and use of a domain name in bad faith”, including: by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 respondent’s web site or location or of a product or service on respondent’s web site or location. The facts of the case demonstrate that the Respondent registered the disputed domain name for commercial gain and to trade on the Complainant’s goodwill and reputation. The Respondent clearly makes unauthorised use of many of the world’s most renowned brands to sell counterfeit products and does so by connecting the world famous Vogue magazine and online brand to its business. For this reason, there is no doubt that the disputed domain name was registered in bad faith. The use of a mark for counterfeit products is in itself a criminal act in most countries and such actions underscore the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, a complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the complainant.
A. Identical or Confusingly Similar
The Complainant is the owner of numerous registered trademarks for VOGUE. For the Complainant to succeed on this element, it must show that “voguemonster” is confusingly similar to VOGUE.
The disputed domain name incorporates the Complainant’s VOGUE trademark in its entirety. The Complainant contends, and the Panel accepts, that the disputed domain name is confusingly similar to its VOGUE trademarks due to its world-wide reputation and publication of international editions of Vogue magazines and Vogue websites. Although “vogue” is a dictionary word, it has acquired a secondary meaning as a brand name in relation to fashion publications. This is particularly so in non-English and non-French speaking countries, such as China where the Respondent is located, where “vogue” is recognised first as a brand and not as a dictionary term. Due to its reputation, the trademark VOGUE is likely to be associated by some members of the public with fashion items such as clothing, bags and sunglasses.
The use of the word “monster”, which is a general term that is used by some online businesses to signify a large or comprehensive store or website, is not enough to distinguish the disputed domain name from the Complainant’s famous VOGUE trademark. And, in any event, the incorporation of the VOGUE trademark in its entirety in the disputed domain name is itself sufficient to satisfy this first element. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
For the reasons discussed above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
Accordingly, the first element has been met.
B. Rights or Legitimate Interests
The complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name (although the burden of proof always remains on the complainant). Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
It is clear that the Complainant has not licensed or otherwise authorised the Respondent to use the VOGUE trademarks and that there is no relationship between the Complainant and the Respondent. The Respondent does not demonstrate any rights or legitimate interests in the disputed domain name. In particular, the use of the symbol TM after the word “Vogue” on the website suggests either that the Respondent is actually aware of the VOGUE trademarks, or that the Respondent is claiming trademark rights in the word VOGUE for the sale of counterfeit fashion merchandise. Given the fame of the VOGUE mark for fashion magazines, though, the Panel does not believe that Respondent could establish any rights or legitimate interests in the mark VOGUE for its counterfeit activities.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and as the Respondent did not submit a response, it has not rebutted the prima facie case established by the Complainant.
Accordingly, on the evidence available to it, the Panel finds that the second element has been met.
C. Registered and Used in Bad Faith
The Vogue brand has a strong reputation in the United States and throughout the world. The Complainant’s first trademark for VOGUE was registered in 1915 in the United States (Trademark Registration No. 103770) and American Vogue reaches a monthly audience of over 1,240,800. In China, where the Respondent is located, the Complainant has had registered trademark rights in the word VOGUE since 1979 (Trademark Registration No. 97264) and China Vogue reaches 577,000 readers each month. The disputed domain name was only registered in October 2008. Given the reputation of the brand, as well as the relatively recent registration of the disputed domain name and the use of the TM symbol by the Respondent in association with the term “vogue”, the Panel finds that the Respondent likely had knowledge of the Complainant’s VOGUE trademarks before registering the disputed domain name (see Advance Magazine Publishers Inc. v. Very Vogue/Kerry Gao/The Manager, WIPO Case No. D2004-0313).
The Complainant argued that the Respondent has clearly used its world renowned brand to sell counterfeit products by connecting the Vogue magazine and online brand to its business. The Panel finds that, by using the well-known mark VOGUE in the disputed domain name, the Respondent has attempted to attract, for commercial gain, users to its website with the intent of creating a likelihood of confusion with the Complainant’s mark and its affiliation with the Respondent’s website (see Advance Magazine Publishers Inc. v. Very Vogue/Kerry Gao/The Manager, supra). This is an example of bad faith under paragraph 4(b) of the Policy.
The Complainant also alleges that the Respondent’s website sells counterfeit or fake designer products. The Complainant points out that the use of mark for counterfeit products is itself a criminal act which underscores the Respondent’s bad faith. It is not the Panel’s place to make a determination (on the presently available evidence in these expedited Policy proceedings) in relation to the alleged counterfeit nature of the goods sold on the Respondent’s website (which allegation the Respondent has not denied in any submitted Response in these proceedings). However the Panel accepts that use of a well-known trademark to lure customers to a website that promotes counterfeit or fake goods would in most circumstances be considered bad faith use.
On the evidence available to it, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
Accordingly, the third element has been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <voguemonster.com> be transferred to the Complainant.
David H. Bernstein
Dated: October 18, 2010