WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Rede XL
Case No. D2012-0314
1. The Parties
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 Rede XL of Lisbon, Portugal.
2. The Domain Name and Registrar
The disputed domain name <gqportugal.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 15, 2012, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On the same date, Name.com LLC transmitted by email to the Center its verification response confirming:
(a) the disputed domain name was registered with it;
(b) the Respondent is listed as the current registrant of the disputed domain name and confirming the Respondent’s contact details;
(c) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the registration; and
(d) English is the language of the registration agreement.
The Center verified that the Complaint satisfied the formal requirements of 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 February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2012.
The Center appointed Warwick A. Rothnie, David H. Bernstein and António L. De Sampaio as panelists in this matter on May 11, 2012. 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 publisher, amongst other things, of the monthly GQ, a men’s fashion and lifestyle magazine.
GQ was first published in 1957. It has an average monthly audience in the United States of over 900,000. Local editions are published in many parts of the world including England, France, Germany, Spain, Brazil, Italy, Russian Federation, Korea, Taiwan, Japan, China, India, South Africa and Portugal. The Portuguese language version, GQ Portugal, has been published since 2001. It sells nearly 17,000 copies per month and claims a monthly readership in 2011 of 57,000.
The Complainant also operates an online version of its magazines at “www.gq.com”. This website receives over 2 million unique users per month.
The Complainant has numerous trademarks registered throughout the world. These include:
(a) Portuguese Trademark No. 348303 for GQ, filed on July 14, 2000 and registered by decision dated October 2, 2001 for a range of services in classes 35, 38, 41 and 42. The class 42 services specified are “services rendered online, not included in other classes, namely information services on fashion, beauty, travels and architecture, via television, satellite, cable and global computer networks”;
(b) Community Trademark No. 000183632 for GQ, filed on April 1, 1996 and registered in December 1998 for a range of goods and services in classes 9, 14, 16, 25 and 41. The class 41 services specified are “electronic information and entertainment services accessible via global or non global computer network”.
The disputed domain name appears to have been registered on November 27, 2009.
The disputed domain name resolves to a website which features images including a front cover from the Complainant’s June 2005 magazine. In addition, a dialogue box pops up featuring the photograph of a young woman, her name, age and a town in Portugal under the title “[name omitted] wants to chat”. The user may then click on a button to “Accept the invitation”. Different people appear from time to time.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic co-ordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the panel to decide the complaint in the absence of exceptional circumstances. Paragraph 15(a) of the Rules requires the panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
Here, the Complainant has proved ownership of numerous registered trademarks for GQ including the two listed in section 4 above.
The disputed domain name is confusingly similar to these proven trademarks. It differs from them only by the addition of the geographic description “Portugal” and the generic top level domain “.com”. As a functional requirement of the domain name system, the latter element may be disregarded. The addition of a descriptive identifier such as the name of a country does not negate the potential for confusion. On the contrary, it is likely to be taken by many people encountering the disputed domain name as signifying a domain name associated with the Portuguese operations of GQ. See Advance Magazine Publishers Inc. v. Vanilla Limited/Domain Finance Ltd./Minakumari Periasany, WIPO Case No. D2004-1068; Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156.
Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidentiary burden will shift to the respondent to rebut that prima facie case.1
The Complainant states that it has not granted the Respondent any rights to use “GQ” in a domain name or as a trademark or otherwise.
The disputed domain name does not bear any alphanumeric relation to the Respondent’s name.
As outlined above, the Respondent is using the disputed domain name in connection with services which appear to be covered by the scope of the Complainant’s registered trademarks, and appears to be making a commercial use of the mark through the offer by various women to enter into “chats” via the website (which, upon acceptance of the “invitation,” leads to a second website offering “dating” services). There is no right or legitimate interest in using a mark in such an infringing manner. Respondent’s use of the GQ mark as part of its domain name, and its use of the GQ mark on the website to which the disputed domain name resolves, do not appear to fall into any other category of rights or legitimate interests (e.g., the Respondent’s use does not appear to qualify as a “legitimate noncommercial or fair use of the domain name”).
In these circumstances, the Panel finds that the Complainant has established a clear prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that case or dispute it in any way. Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by the complainant.
In this case, it is plain that the Respondent knows of the Complainant’s rights in its trademark GQ. The Respondent has placed images of the Complainant’s magazine cover on the Respondent’s website. In addition, the website includes a notice “© GQ Portugal” and a notice in Portuguese which translates into a reservation of all rights.
The Panel also notes that the term “GQ” is not descriptive of either the Complainant’s goods and services or the service the Respondent appears to be operating from its website. The term “GQ” is not therefore one which is likely to be adopted independently of the Complainant’s use of and reputation in GQ. The “chat” and “dating” services the Respondent appears to offer plainly seeks to gain some advantage from the association with the Complainant’s publications and other operations under the trademark.
The evidence on the record is that the Respondent registered the disputed domain name well after the Complainant acquired its rights in the trademarks identified in section 4. The registration of the disputed domain name was also obtained well after the Complainant began distributing the Portuguese language edition of its publication throughout Portugal.
In these circumstances, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith.
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, <gqportugal.com>, be transferred to the Complainant.
Warwick A. Rothnie
David H. Bernstein
António L. De Sampaio
Dated: May 31, 2012
1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.