WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang

Case No. D2012-0136

1. The Parties

The Complainant is 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 Respondent is Chunhai Zhang of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <voguecatch.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2012. On January 26, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 30, 2012, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On January 31, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of the proceeding. On January 31, 2012, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center has verified that the Complaint satisfies 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 proceeding commenced on February 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 27, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on February 29, 2012.

The Center appointed Sebastian M.W. Hughes, David H. Bernstein and Jacob (Changjie) Chen as panelists in this matter on March 20, 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.

On March 27, 2012, the Panel issued a procedural order requesting that Annexes E through K to the Complaint be resubmitted, as there was an error in their initial transmission. To “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” the Panel granted the Respondent a five-day period to make submissions in response in respect of the resubmission of the Annexes. See paragraph 10(b) of the Rules. The Complainant resubmitted the requested annexes to the Complaint on March 28, 2012. The Respondent did not submit any response. On April 3, 2012, the Panel extended the due date for this Decision to April 10, 2012.

4. Factual Background

A. Complainant

The Complainant is a company incorporated in the State of New York in the United States of America and the owner of numerous registrations for the trade mark VOGUE (the “Trade Mark”) worldwide, the earliest dating from 1914.

B. Respondent

The Respondent appears to be an individual based in China.

C. The Disputed Domain Name

The disputed domain name was registered on August 31, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint:

The Complainant is one of the world’s most successful magazine publishers and the publisher of Vogue, the world’s major fashion and style magazine for women, launched in 1892.

The US edition of Vogue reaches an average monthly audience of over 1,240,800. In addition to the United States, the Complainant via its subsidiaries or licensees publishes Vogue in the United Kingdom of Great Britain and Northern Ireland, France, Germany, Spain, Brazil, Italy, Greece, Portugal, Russian Federation, Republic of Korea, Taiwan, Province of China, Japan, Australia, Latin America and China.

Since 2000, the Complainant has operated its “www.vogue.com” and “www.style.com” websites under the Trade Mark. These websites feature fashion show video coverage, Vogue magazine content, photos, designer profiles and current apparel line information, as well as advertisements from luxury brand owners. “www.vogue.com” obtains over 7 million page views per month and over 600,000 unique users every month.

The Complainant’s subsidiaries and licensees also operate other Vogue websites in many countries, including France, Italy, Russian Federation, Japan, Germany, Australia, the United Kingdom, Republic of Korea, and China.

Since September 2005, the Complainant’s licensee, China Pictorial, has published Chinese Vogue magazine in China. “www.vogue.com.cn”, the online home of Vogue China, was launched at the same time as Chinese Vogue magazine. The “www.vogue.com.cn” website averages over 20,000 page views per month.

The Complainant states that the disputed domain name is linked to a website (the “Respondent’s Website”) which sells counterfeit merchandise. The Complainant’s exact allegations are as follows:

“The Voguecatch.com site is an ecommerce site which sells ‘replica’, namely counterfeit, merchandise. The products available for sale on the site are classified primarily by type of product and by brand and the site purports to carry products from many of the world’s most exclusive luxury goods manufacturers such as Louis Vuitton, Chanel, Gucci, Cartier, Coach and many others. This is not true. Complainant alleges that Voguecatch.com sells counterfeit products using luxury brand names. Annex H contains printouts from the Voguecatch.com site. . . .

“In June 2011 an employee of Complainant’s Chinese subsidiary, Ms. Jingme Xue, contacted the domain name owner and was informed that Mr. Weihua Yang is actually the person that controls the domain. On three separate occasions between June 2011 and January 2012 Mr. Yang orally agreed to stop using the disputed domain name in connection with the counterfeit products e-commerce site. However, in each case the voguecatch.com site would appear to be disabled for several days or weeks and then it would be back online.

“On January 9, 2012 Ms. Xue recorded her conversation with Mr. Yang and the audio recording of the conversation as well as the English translation of the conversation are attached as Annex I and Annex J, respectively. In the conversation, Mr. Yang once again agrees to ‘close the website’, which indicates that Respondent acknowledges Complainant’s rights and should be considered an admission of bad faith.”

The English translation of the January 9, 2012 conversation (submitted as Annex J to the Complaint) indicates that the Complainant told the Respondent that it objected to the sale of “counterfeit” products on the Respondent’s Website. In response, the Respondent stated repeatedly that he would “close the website.” At no point in the recorded conversation did the Respondent contest the statement that he was selling “counterfeit” products on the Respondent’s Website.

The disputed domain name is confusingly similar to the Trade Mark as it contains the Trade Mark in its entirety together with the word “catch”.

The Respondent does not have any rights or legitimate interests in respect of the disputed domain name as the Complainant has not granted the Respondent the right to register or use the disputed domain name.

The Respondent has registered and is using the disputed domain name for commercial gain and to trade on the Complainant’s goodwill and reputation in the Trade Mark. The Respondent is using the Trade Mark in connection with many of the world’s most renowned fashion brands to sell counterfeit products on the Respondent’s Website. The Respondent has therefore registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. As such, any well pleaded allegations of fact in the Complaint are deemed admitted.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) the disputed domain name is an English language domain name;

(2) the content of the Respondent’s Website is entirely in English;

(3) the Respondent’s Website provides English language terms of services and allows for English language credit card payment; and

(4) the Respondent should not therefore be allowed to argue ignorance of the English language in this proceeding.

The Respondent did not file any submissions with respect to the language of the proceeding.

The registrar Bizcn.com, Inc. has transmitted to the Center its verification response confirming that the language of the Registration Agreement for the disputed domain name is Chinese.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

The Panel notes, for the reasons specified by the Complainant in its submissions regarding the language of the proceeding, it appears the Respondent is proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). Significantly, the disputed domain name was used for an English-language website.

The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Decision

The Complainant must prove each of the three elements of paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The first condition of paragraph 4(a) of the Policy requires the Complainant to prove the disputed “domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights.”

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by well over a hundred years.

UDRP panels have consistently held that a domain name is generally identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The disputed domain name contains the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive word “catch” does not serve to distinguish the disputed domain name from the Trade Mark in any way.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second condition of paragraph 4(a) of the Policy requires the Complainant to prove the Respondent has “no rights or legitimate interests in respect of the domain name.”

Paragraph 4(c) of the Policy provides a list of circumstances which can demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the disputed domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which long precede the Respondent’s registration of the disputed domain name.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant also contends the Respondent’s Website is used by the Respondent to market counterfeit luxury goods. If that allegation is credited, that would be powerful evidence that the Respondent lacks rights or legitimate interests because, under UDRP jurisprudence, there can be no rights or legitimate interests in the sale of counterfeit goods (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).

Whether the Complainant’s assertion that the Respondent’s Website is being used to market counterfeit goods can be credited raises an interesting question. In one recent UDRP case, the panel suggested that allegations of counterfeiting must be proven by complainants with some direct evidence that counterfeit goods have in fact been sold, such as through a “trap” purchase under which samples of the good are “obtained and validated by an appropriate person” as being counterfeit. Karen Millen Fashions Limited v. Danny Cullen, WIPO Case No. D2011-1134 (“Whilst there are certain matters that a panel may accept upon the assertion of a complainant that is not contradicted by the respondent, . . . as assertion of dishonesty (such as, for example, offering for sales goods said to be counterfeit) on the part of the person is not among them.”). In the view of this Panel, that standard is too stringent. Rather, if facts are well pleaded and are not rebutted (including because of a default), those facts may be accepted as true, even if they are facts accusing a respondent of dishonesty.

In reaching this conclusion, the Panel is mindful that the UDRP is designed to provide a fair, expedient, and cost efficient mechanism for parties to resolve disputes over alleged abusive cyber squatting practices. Fairness is ensured because the respondent is given notice (to the addresses that it provided when it registered its domain name) and is given an opportunity to respond to all allegations. Expedience is ensured because the parties and the panel operate under time deadlines designed to ensure that a decision can be rendered within two to three months. Cost efficiency is ensured through the Rules that provide, in general, that cases will be decided only on a written record (with word limits on submissions), with one submission from each side, and without any discovery or oral hearings. And, due process is ensured because the remedies available are quite limited – the panel may only award transfer or cancellation of a domain name, with no imposition of costs, lawyers’ fees or other potential sanctions on losing respondents – and respondents are entitled to challenge a UDRP decision by filing suit in a court of competent jurisdiction within the period prescribed under the Policy¹.

Consistent with these principals, a complainant must allege facts sufficient to establish each of the three elements of the Policy, and must ensure that those facts are well pleaded. Conclusory allegations are unlikely to be sufficient; rather, the allegations should be specific and, if not burdensome, supported with appropriate evidence.

In the Karen Millen Fashions Limited case, supra, the complainant’s allegations regarding counterfeiting were merely conclusory. The complainant in that case stated only that the “clothing has been verified as counterfeit” and that “complaints have been made to the complainant’s customer service representatives” concerning the “poor quality of garments purchased from the website.” Despite an invitation by the panel to supplement the record with evidence to support those allegations (for example, by explaining how the complainant “verified” the counterfeit nature of the products, or by providing some details about the complaints that were submitted about the respondent’s products), the complainant never provided any details. Although that panel may well have been right in rejecting the conclusory allegations of counterfeiting, the dicta suggestion that allegations of dishonesty require a heightened pleading standard, or that counterfeiting must be proven through “trap” purchases, goes too far. Circumstantial, rather than direct, evidence of counterfeiting may well suffice and, depending on the facts of any given case, may well be sufficient to enable the panel to draw an inference of counterfeiting on the part of the respondent in question.

That said, alleging the bare minimum in order to just clear the pleading threshold is not a prudent approach. A complainant who makes the minimal allegations required to support a prima facie showing of counterfeiting may not be given an opportunity to supplement the record should the respondent respond with a vigorous denial. That is because, as noted above, the UDRP is intended to be an efficient process, and in the normal course, complainants are not given an opportunity to reply to the respondent’s response. Thus, the more prudent approach often will be to support all allegations, including allegations of counterfeiting, with evidence that will likely be persuasive to the panel.

In the present case, the Complainant has sufficiently pleaded that the Respondent was offering counterfeit goods on the website. The evidence on the record establishes that the Complainant directly accused the Respondent of counterfeiting, and the Respondent did not reject or rebut that allegation; rather, the Respondent repeatedly promised, in response, to “close down” the website. That is hardly the conduct of a legitimate reseller selling authentic goods to consumers.

Furthermore, the screenshots of the Respondent’s Website submitted with the Complaint show luxury branded goods offered for sale at exceptionally low prices.

Taken together, this evidence is sufficient to substantiate the Complainant’s assertion and enable the Panel to draw the inference, in the circumstances of this case, that the goods offered for sale on the Respondent’s Website are indeed counterfeit. The Complainant has, therefore, established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden of production is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Given the Respondent’s failure to rebut this showing, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name is not being used in connection with a bona fide offering of goods or services. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The third condition of paragraph 4(a) of the Policy requires the Complainant to prove the domain name was registered or is being used in bad faith. Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“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.”

As described more fully by the Panel above, the Complainant asserts that the disputed domain name has been used to offer for sale counterfeit products under the Trade Mark via the Respondent’s Website. The Respondent has not sought to contest the Complainant’s specific allegations in this respect. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

The Panel finds the Respondent’s conduct in registering the disputed domain name and using it for the questionable commercial purposes described above, all without the authorisation, approval or licence of the Complainant, amounts to paradigmatic bad faith registration and use under paragraph 4(b)(iv) of the Policy.

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 the disputed domain name <voguecatch.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Presiding Panelist

David H. Bernstein
Panelist

Jacob (Changjie) Chen
Panelist

Dated: April 10, 2012

¹ Up to 10 days from the date of the decision (UDRP paragraph 4(k)).