WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Snezhana Yurova
Case No. D2013-0758
1. The Parties
The Complainant is Advance Magazine Publishers Inc., New York, New York, United States of America (“US”), represented by Sabin Bermant & Gould, LLP, US.
The Respondent is Snezhana Yurova of Moscow Region, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <gqescort.com> (the “Disputed Domain Name” and/or the “Website”) is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2013. On April 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 5 and 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the language of the Registration agreement was in Russian, the Complainant filed a translated version of the Complaint on May 8, 2013.
The Center verified that 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 May 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 4, 2013.
The Center appointed Gabriela Kennedy, Mark Partridge and Piotr Nowaczyk as panelists in this matter on July 22, 2013. 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 July 25, 2013, the Center notified the Panel that the Written Notice was sent to an address that differed from the one listed by the Registrar and that the mutual jurisdiction, which the Complainant chose to be the location of the Respondent, was incorrect. The Panel issued a Procedural Order No. 1 on August 2, 2013 requesting that the Complainant amend the Complaint to reflect the address listed by the Registrar and to amend its choice of mutual jurisdiction by August 7, 2013. The Panel allowed until August 14, 2013 to file a Response. The Complainant duly filed an amended Complaint on August 2, 2013. The Respondent did not submit any Response.
4. Language of the Proceedings
Rule 11(a) provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the Parties. The Rule also provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding.
The language of the Registration Agreement is Russian. Prima facie, paragraph 11(a) of the Rules requires that the language of the proceedings be Russian. On May 6, 2014, the Center sent an email to the Complainant requesting that the Complainant provide a Russian translation to the English Complaint. In the same email, the Center informed the Respondent that the proceedings will proceed in English if the Respondent does not object. The Respondent did not respond to the Center’s email.
The Panel is mindful of the requirement of paragraph 10(b) of the Rules which provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Panel notes that the Center has issued its case-related communications in both Russian and English. The Respondent has chosen not to participate in the proceedings and it has been notified of its default in both Russian and English. The Panel is satisfied that the Center’s approach has been fair and appropriate, reserving the discretion to the Panel to determine the appropriate language of the proceedings (see Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002).
Further, in ensuring the fairness in the selection of language, the Panel takes into consideration the parties' level of comfort with each language (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679). In the present case, although the Registration Agreement is in Russian, English has been used in both the disputed domain name and its associated Website. The Panel is therefore satisfied that the Respondent can communicate in English without any difficulties.
Lastly, the Panel is fluent in both English and Russian and can understand the evidence submitted in both languages. Accordingly, in light of the fairness to both parties, the Panel renders its decision in English.
5. Factual Background
The Complainant is Advance Magazine Publishers Inc., one of the world’s most successful magazine publishers. Through its unincorporated division, The Condé Nast Publications, the Complainant publishes several well-known magazines such as GQ, which was launched in 1957 and is one of the leading magazines for men's fashion and lifestyle. The US edition of GQ alone sells an average of 900,000 copies monthly. Through subsidiaries or local licenses, the Complainant also publishes GQ magazines in numerous countries, including England, France, Germany, Spain, Brazil, Italy, Korea, Taiwan, Japan, Latin America, China, India, South Africa, Portugal and Russia. In particular, the Russian edition of GQ has an average of 68,000 – 100,000 readers per month. In addition to the magazines, the Complainant and its subsidiaries operates several GQ websites in many countries including the US (“www.gq.com”) and Russia (“www.gq.ru”) which attracts over 2 million and 456,000 unique viewers per month respectively. The Complainant and/or its subsidiaries own over 500 trade mark registrations for GQ and all over the world including the US, Canada, Russia, Bahrain, Ukraine, France and Italy since 1984.
The Respondent is an individual named Snezhana Yurova from Moscow, Russia. It registered the Disputed Domain Name on June 20, 2012.
6. Parties’ Contentions
a) The Complainant and/or its subsidiaries own over 500 trade mark registrations for GQ all over the world including the US, Canada, the Russian Federation, Bahrain, Ukraine, France and Italy since 1984.
b) The Respondent has no rights or legitimate interests whatsoever with respect to the Disputed Domain Name. The Complainant never granted the Respondent the right to use or register the GQ mark, either in connection with a Disputed Domain Name registration or a bona fide offering of goods and services or for any other reason.
c) The Disputed Domain Name resolves to a website which features adult content and images, namely an escort service. The Website prominently displays the Complainant's GQ mark throughout the site. There is no doubt that the registration and use of the Disputed Domain Name has caused and will continue to cause consumer confusion and damage to Respondent’s reputation. Further, these facts demonstrate that the Respondent has registered and used the Disputed Domain Name primarily to trade on the Complainant's goodwill and reputation for commercial gain.
d) The Complainant sent the Respondent a cease and desist letter on February 7, 2013 demanding that it cease infringing the GQ trademark and demanding transfer of the Disputed Domain Name. The Respondent did not respond.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) The Disputed Domain Name 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 respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the GQ trademark on the basis of its trade mark registrations all over the world including the US, Canada, the Russian Federation, Bahrain, Ukraine, France and Italy since 1984.
The Disputed Domain Name incorporates the Complainant's GQ trademark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s GQ trademark is the inclusion of the word “escort” as a suffix. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark. (See LEGO Juris A/S v. Huangderong, WIPO Case No. D2009-1325; National Football League v. Alan D. Bachand, Nathalie M. Bachand d/b/a superbowl-rooms.com, WIPO Case No. D2009-0121; National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064).
In this case, “GQ” is the distinctive and prominent component of the Disputed Domain Name and the addition of the word “escort” does nothing to distinguish it from the Complainant's GQ trademarks. Given that the GQ magazine is a well-known men’s magazine which features information on fashion, entertainment, women, sports, food and travel, cars and technology products, to some users, the addition of women escort services may be considered GQ's brand and business. The Panel finds that this, combined with the use of the GQ trademark displayed prominently throughout the Website, would cause users to make an immediate connection to Complainant’s GQ brand.
Further, it is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the top-level domain, in this case “.com” may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's GQ registered trademarks in which it has rights or interests, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s GQ mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of the GQ trademark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to demonstrate it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
The Complainant has provided screenshots as evidence that the Disputed Domain Name resolves to a site containing adult images and escort services with the GQ trade mark displayed prominently. While websites containing escort services and adult images may be legal and may constitute a bone fide offering of goods and services, using someone else's trade mark as a domain name to do so certainly is not. Such use of a trade mark can create customer confusion or dilution of the mark, which is precisely what trade mark laws are meant to prevent. Violations of the law can hardly be considered bone fide (see Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079).
Consequently, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As already established above, the Disputed Domain Name was registered and used for escort services. The fact that the Complainant’s well known trade mark is used for displaying content of a sexual nature, and may lead to tarnishing the mark, constitutes bad faith (see Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314 and Benetton Group SpA v. Domain for Sale, WIPO Case No. D2001-1498).
Further, the Panel finds that, given the fame of the Complainant's “GQ” magazines and the use of the GQ mark as part of the Disputed Domain Name, the Panel considers that the Respondent must have been aware of the Complainant at the time of registration. In the Panel’s view, it is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the Disputed Domain Name other than to take advantage of the goodwill of the Complainant’s GQ mark and to confuse users as to the source, sponsorship, affiliation or endorsement of the Website.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For 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 <gqescort.com> be transferred to the Complainant.
Date: August 19, 2013