WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Contact Privacy Inc. / Julia Burns
Case No. D2015-0617
1. The Parties
1.1 The Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
1.2 The Respondent is Contact Privacy Inc. of Toronto, Canada / Julia Burns of Vancouver, Canada.
2. The Domain Name and Registrar
2.1 The disputed domain name <vogueauction.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2015. At or about that time the publicly available WhoIs information recorded the registrant of the Domain Name as "Contact Privacy Inc", the name of which would suggest that this is a privacy service.
3.2 On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing Julia Burns as the registrant and providing contact information. Presumably these were the details recorded by the privacy service for the underlying registrant for the Domain Name. The contact email address disclosed in this respect for the registrant was "email@example.com".
3.3 The Center sent an email communication to the Complainant on May 5, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 8, 2015.
3.4 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").
3.5 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 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2015.
3.6 Because of the Respondent default, the Panel has carefully reviewed the records of the Center's efforts to serve the Complaint on the Respondent. The Panel finds that the Center properly discharged its obligation to notify the Respondent of the Complaint using the contact information supplied by the Respondent at the time that it registered the domain name. If the Respondent did not receive actual notice of the Complaint, that is a consequence of the Respondent's failure to provide accurate contact information.
3.7 The Center appointed Matthew S. Harris, David H. Bernstein and Leon Trakman as panelists in this matter on June 30, 2015. 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
4.1 The Complainant is the publisher of a number of well known magazines, one of which is "Vogue". Vogue is a fashion and style magazine targeted at women that is published through the Complainant's Condé Nast division. The magazine was launched in 1892, and is now published in various forms in a large number of countries around the world. The monthly circulation of this magazine in the United States in the six month period ending June 30, 2014, was over 1.2 million people.
4.2 The magazine has since 2000 had an online presence, which operates from the domain name <vogue.com>.
4.3 The Complainant is the owner of a large number of trade marks that either comprise or incorporate the term "Vogue". They include the following:
(i) United States registered trade mark no 3,069,976 for the word mark VOGUE in classes 44 and 45, filed on March 25, 2005 and registered on March 21, 2006;
(ii) Community Trade Mark no 011027570 for the word mark VOGUE in class 9, filed on April 26, 2010 and registered on June 26, 2012;
(iii) Canadian registered Trade Mark no 561,966 filed on May 31, 2000 and registered on May 14, 2002 broadly in respect of printed publications and the provision of fashion and style information via the internet, and which takes the following form:
4.4 The Domain Name was registered on July 31, 2014.
4.5 On October 1, 2014 the Complainant became aware of the Domain Name as a consequence of an email sent by an individual in Mexico. That individual stated that the Domain Name was being used for "an internet fraud scheme" of which this individual had claimed to have been a victim. In particular, it was alleged that the Domain Name was being used for an auction to sell signed copies of images taken by the photographer Mario Testino. This sale purported to be for the charity "Save the Children", but the individual claimed that this charity had no knowledge of this auction.
4.6 In that email the individual also claimed that the operator of the website using the Domain Name had used various email addresses, including "firstname.lastname@example.org". According to this individual, this email address was also being used in connection with another webpage that purported to be selling goods for another charity. The domain name for that website was, it was said, registered in the name of "Julia Burnes".
4.7 On October 8, 2014 the Complainant's general counsel sent an email to various email addresses, including "email@example.com". In that email the Complainant complained about the use of the Domain Name and other alleged infringements of the Complainant's intellectual property rights. So far as the website operating from the Domain Name was concerned, those complaints extended to the use of "an identical replica of [the Complainant's] VOGUE logo ... at the top of [the website] page" and the fact that "the site's 'about' page feature[d] an article copied from Vogue.com, discussing an authorized sale of photographs initiated by Vogue magazine's Creative Director, Grace Coddington".
4.8 The Complainant's lawyers received no response to that email. However, at some point after this email was sent, the person or persons controlling the website operating from the Domain Name took steps to disable that website. From this point a "Shopify Shop" holding page displaying with the words, "Sorry, this shop is currently unavailable", has operated from the Domain Name.
4.9 This holding page continues to be displayed as at the date of this decision.
5. Parties' Contentions
5.1 The Complainant contends that the Domain Name comprises its VOGUE trade mark together with the descriptive word "auction". It claims that as a consequence the Domain Name is confusingly similar to its trade marks and that in this particular case there has been actual confusion.
5.2 The Complainant complains that the registration and use of the Domain Name is part of a broader activity by the Respondent whereby it has posed as the Complainant. In this respect it refers to "multiple Instagram profiles and a Facebook page", which it is claimed looked as if these were "official Vogue accounts".
5.3 The Complainant does not provide copies of these profiles or page, but contends that these accounts were disabled as a consequence of the Complainant filing trade mark infringement complaints with Instagram and Facebook. A copy of the trade mark report form that the Complainant's lawyers submitted to Facebook is provided in this respect.
5.4 The Complainant further contends that the Respondent has not been authorised to use the Complainant's VOGUE marks and "has no legitimate use or right to use the VOGUE brand". The Complainant relies upon the fact that the Respondent did not respond to its lawyers' October 8, 2014 email as further evidence of a lack of rights or legitimate interests.
5.5 The Complainant maintains that the Domain Name was used to lure consumers to a website in which the "VOGUE brand" was being used to sell goods.
5.6 The Complainant also asserts that the Respondent has conducted him or herself in such a way as to deliberately disguise the true identity of the person or persons responsible for the website operating from the Domain Name. Further the fact that the Respondent took down that site once contacted by the Complainant's lawyers is said to constitute "evidence of an unauthorized use".
5.7 Together this is said to show that the Domain Name has been registered and used in bad faith.
5.8 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
6.4 The Panel accepts that the only sensible reading of the Domain Name is a combination of the terms "vogue", "auction" and the ".com" Top-Level Domain ("TLD"). The Complainant has adequately shown that it has a large number of trade marks that incorporate or comprise the term "vogue". They include the two word marks identified in paragraph 4.3 of this decision above. This is, therefore, a case where the Domain Name comprises a trade mark in its entirety (as to which see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227). Given this, the Panel concludes that the Domain Name is confusingly similar (as that term is understood under the Policy) to a number of trade marks in which the Complainant has rights. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 For the reasons that are set out in greater detail under the heading "Registered and Used in Bad Faith" below, the Panel is of the opinion that the Domain Name has most likely been registered and then used as part of a broader scheme to impersonate the Complainant. At the very least the Domain Name has been used to attract persons to a website in the belief that it is somehow controlled or endorsed by the Complainant. Such activity does not provide a right or legitimate interest for the purposes of the Policy. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.6 Although the Complainant does not quite express itself in these terms, the thrust of the Complaint in this case is that whoever registered and controls the Domain Name has registered and used the Domain Name for a website that impersonated the Complainant.
6.7 The Complainant also appears to allege that this website was then used to engage in broader fraudulent activity beyond the fact of impersonation. Although the word "fraud" does not appear in the Complaint itself, the Complainant heavily relies upon an email it received on October 1, 2014, in which a third party claimed the Domain Name was being used for "an internet fraud scheme". Further, the Complainant's lawyers in a Facebook trade mark report form annexed to the Complaint asserted that:
"Considering the fact that this person [i.e., the operator of the Facebook profile page] is luring your users, and our client's fans into fraudulent credit card transactions, we hope you take action as soon as possible."
6.8 There is insufficient material before the Panel to conclude whether or not there is some broader fraud going on in this case. However, the Panel does accept that the Domain Name and the website operating from it have been used to impersonate the Complainant. This is so notwithstanding the fact that the Complainant appears not to have retained copies of the website that operated from the Domain Name and therefore has been unable to provide these with the Complaint.
6.9 The reasons for this include the fact that it has been alleged, and is not disputed, that the Vogue logo was prominently used in the website and the wording in the "about" section of the website copied language from an article produced by Vogue magazine's creative director in connection with an authorised sale of prints.
6.10 The Panel also finds the Respondent's use of the "conde_nast@hotmail" email address in connection with the Domain Name and website particularly compelling. It is difficult to read this email address as anything other than an attempt to impersonate the division of the Complainant's company that is responsible for the publication of Vogue magazine.
6.11 To register and use a domain name for the purposes of the impersonation of a trade mark owner are clear examples of bad faith registration and use. Further, even if there were not impersonation in this case, the Respondent's activities constitute an attempt to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that site or the products offered for sale on that website. As such the Respondent's activities fall within the scope the example of evidence of registration and use in bad faith set out at paragraph 4(b)(iv) of the Policy.
6.12 Finally, the Panel accepts the Complainant's undisputed claims that the Respondent has conducted its activities in a way that has been designed to hide the true identity of the person or persons behind the website operating from the Domain Name. This is a further factor in this case that supports a finding of bad faith registration and use.
6.13 he fact that the website at the Domain Name was disabled after the Complainant sent an email to various addresses connected to the Respondent does not prevent a finding of bad faith.
6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <vogueauction.com> be transferred to the Complainant.
Matthew S. Harris
David H. Bernstein
Date: July 12, 2015