WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Domains By Proxy, LLC / Vogue gen tr
Case No. D2015-1423
1. The Parties
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.
The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Vogue gen tr of Sharjah, United Arab Emirates ("UAE"), internally represented.
2. The Domain Name and Registrar
The disputed domain name <voguevip.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 12, 2015. On August 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 13, 2015, 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 Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 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 August 25, 2015.
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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2015. The Respondents sent informal email communications to the Center throughout these proceedings. The Response was filed with the Center on August 29, 2015.
On September 2, 2015, the Respondents requested the Panel consider evidence that they proposed to keep confidential from the Complainant, for reasons of business security.
The Center appointed Nick J. Gardner, Martin Schwimmer and Kaya Köklü as panelists in this matter on November 11, 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
The Complainant is one of the world's most successful magazine publishers. Through its unincorporated division, Condé Nast Publications, the Complainant publishes several well-known magazines such as Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ.
Vogue was launched in 1892 and is one of the world's leading fashion and style magazine for women. Its U.S. edition reaches an average monthly audience of over one million readers. Through subsidiaries or local licenses, the Complainant also publishes Vogue magazines in numerous countries, including the United Kingdom of Great Britain and Northern Ireland, France, Germany, Spain, Brazil, Italy, Greece, Portugal, the Russian Federation, Turkey, Ukraine, the Republic of Korea, Japan, Australia, Mexico and China.
The Complainant is the owner of multiple trademark registrations for the mark VOGUE around the world. For example: U.S. trademark registration No. 69530, registered on June 16, 1908. The Complainant is also the owner of registered trademark number 30656 for VOGUE (in Arabic) in the UAE.
Through extensive and prolonged use and advertising around the world, the VOGUE trademark has generated significant goodwill and has become famous.
The Complainant also developed a substantial presence on the Internet and is the owner of multiple domain names which contain the name "Vogue", including in particular: <vogue.com>.
The Disputed Domain Name was registered on January 8, 2013.
The Disputed Domain Name leads Internet users to a website that offers for sale a range of branded luxury fashion goods.
5. Parties' Contentions
The Complainant argues that the Disputed Domain Name is confusingly similar to the VOGUE trademark, in which the Complainant has rights, given that it incorporates the VOGUE trademark as a whole, with the additional generic term "vip", being an abbreviation for "very important person" or more generally in common usage an indication of high quality or luxury.
The Complainant contends that the Respondents are using the fame of the Complainant's VOGUE brand to lend credibility to its business and create a false impression that the Respondents are affiliated with the well-known VOGUE brand.
The Complainant further argues that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name, that it has not licensed or otherwise permitted the Respondents to use its VOGUE trademark and is not affiliated or otherwise connected to the Respondents.
The Complainant further argues that the Respondents are not generally known by the Disputed Domain Name nor have they acquired any trademark rights in the name "Vogue".
The Complainant contends that the Respondents have registered and are using the Disputed Domain Name in bad faith.
The Complainant further argues that the Disputed Domain Name is likely to mislead or confuse the public as to its source or origin.
The Complainant contends that the Respondents registered the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant's mark and to disrupt the Complainant's business. The Complainant also says that it suspects the products offered for sale via the Respondents' website are counterfeit which is a further indication of bad faith.
For all of the above reasons, the Complainant requests the transfer of the Disputed Domain Name.
The Respondents prepared the Response by taking the Complaint and annotating it with comments. These are clearly written by someone for whom English is not a first language and are not very easy to understand. They are also somewhat repetitive. In addition the Respondents' comments and their correspondence with the Center indicate that the Respondents have failed to understand properly the nature of these proceedings and contain requests that this matter is dealt with in the UAE (see further below). In these circumstances the Panel has reviewed the material the Respondents have provided carefully and Panel believes the substance of the case the Respondents seek to advance in response to the Complaint is as follows:
1. The business operated by the Respondents is not a magazine and is different from that of the Complainant.
2. The Respondent Vogue gen tr is registered in the UAE under the name "Vogue Gen Tr" and is using its own name.
3. "Vogue" is a generic English word and there are many other web sites that use the word.
4. The Respondents have spent a lot of money and time developing their business.
5. The Respondents vehemently dispute selling counterfeit goods which they say is illegal in the UAE.
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Domains by Proxy LLC) appears to be a privacy or proxy registration service while the other Respondent (Vogue Gen tr) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, as follows "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondents was responsible for specific acts.
Applicable Law and Jurisdiction
The Panel also notes that the Respondents appear to suggest that the appropriate jurisdiction for the issues to be determined is before the courts of the UAE and/or by panels who are familiar with UAE law. According to paragraph 15(a) of the Rules, it is the function of the Panel to decide this dispute in accordance with the Policy and the Rules. So far as the Panel is concerned the evidence establishes that the Respondents, as the registrant of the Disputed Domain Name, are party to an agreement which contractually binds them to the Policy and the Rules. The Respondents have been duly served with the Complaint in accordance with the relevant applicable requirements and the Panel concludes this proceeding is properly constituted and it is able and required to proceed to render a decision. Any wider relief the Respondents consider they are entitled to (and the Panel offers no opinion as to whether such relief is appropriate) is something they should pursue elsewhere. That is a matter for the Respondents and does not prevent the Panel deciding this case on the material before it. See WIPO Overview 2.0, paragraph 4.15.
Respondents' "Confidential" Materials
In accordance with paragraph 10(d) of the Rules, the Panel denies the Respondents' request that it consider materials that will not also be made available to the opposing Party. In this regard the Panel notes paragraph 2(h)(iii) of the Rules: "Any communication by a Party shall be copied to the other Party, the Panel and the Provider, as the case may be." In any event, having been apprised by the Respondents of the nature of the documents proposed for Panel consideration, the Panel considers that they would not have made a material difference to the outcome of this case.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks consisting of the word "vogue" (the "VOGUE trademarks").
The Panel holds that the Disputed Domain Name is confusingly similar to the VOGUE trademarks. The Disputed Domain Name, as registered by the Respondents, incorporates the VOGUE trademarks. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, 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 only difference in the present case is the addition of the acronym "vip". This addition does not suffice to negate the confusing similarity between the Disputed Domain Name and the VOGUE trademarks – if anything the addition of "vip", which suggests luxury, increases the similarity.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here "vip", which simply suggests a luxury or high quality element) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, the mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
i. before any notice to you of the dispute, your 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. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the Panel understands it the Respondents are in substance suggesting that (i) and (ii) apply in this case. So far as (i) is concerned the Panel does not consider that the offering of branded luxury fashion goods for sale on the website at the Disputed Domain Name is bona fide. While "vogue vip" is capable of sustaining a descriptive meaning relevant to the Respondents' endeavor (i.e., something along the lines of "luxury fashion"), given the high degree of secondary meaning the VOGUE mark has achieved in the fashion field (including in the UAE),,the Panel finds that the Respondents have adopted the Disputed Domain Name for their fashion business in a deliberate attempt to take commercial advantage of the Complainant's fame and reputation by misleading Internet users into inferring an association between the Complainant and the Respondents (see further below under the discussion as to bad faith). That does not amount to a bona fide offering.
So far as (ii) is concerned the Panel suspects that Vogue gen tr is in any event a formalized abbreviation for "Vogue General Trading". Even assuming in the Respondents' favour that a company or other legal entity of such a name is properly constituted under an applicable legal system (in this regard the Respondents have submitted as evidence a "membership registration certificate" from the Sharjah Chamber of Commerce and Industry, UAE, for a company by the name of "VOGUE GEN. TR.") the Panel does not consider that a respondent who deliberately adopts a name which corresponds to, or is similar to, that of a complainant, with a view to taking advantage of that complainant's fame and reputation, can then take advantage of an "own name" provision to justify its actions. The right to use one's own name is not unlimited and cannot be used to circumvent well known prior rights in a similar name – see for example Peter Frampton vs. Frampton Enterprises, Inc., WIPO Case No. D2002-0141:
"While the Panel recognizes that any individual has a right to use his(her) name in connection with a business, that right is not unfettered; instead, it is circumscribed by the prior trademark rights of others who use that name in connection with specific goods and services, as is certainly the case here.
A party alleging, under paragraph 4(c)(ii), as the Respondent purports to do here, that it is commonly known by a particular name, sufficient to show legitimate rights and interest in a domain name that contains that particular personal name (e.g., a surname), must provide adequate extrinsic proof that a corresponding group of consumers, e.g., Internet users, who are likely to access that party's web site, associates that domain name with that party rather than with the trademark owner, i.e., that domain name possesses requisite secondary meaning, or at least that party has used or is using that name sufficiently broadly such a panel can infer that such meaning exists."
The Panel agrees with that approach in the circumstances of the present case. More fundamentally it should be noted that what paragraph 4(c)(ii) of the Policy requires is that the Respondents demonstrate that they are commonly known as the Disputed Domain Name. It is not sufficient for the Respondents to say their name is "Vogue gen tr" – they have to show that they are commonly known as "vogue vip". No evidence at all to this effect has been produced by the Respondents. The Panel therefore does not consider that the Respondents' name (Vogue gen tr) entitles them to claim a right or legitimate interest in the Disputed Domain Name.
Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature and fame of the VOGUE trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the VOGUE trademark, and the confusingly similar nature of the Disputed Domain Name to the VOGUE trademark, and the lack of any explanation from the Respondents as to why they chose the Disputed Domain Name leads the Panel to conclude that its registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondents selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The Complainant's magazine is an extremely successful and famous magazine aimed at consumers, especially women, interested in fashion and luxury goods. The website operated by the Respondents at the Disputed Domain Name is clearly promoting a business which supplies what are said to be high quality fashion and luxury goods, and its potential customers are inevitably likely to be customers who are familiar with the Complainant and its magazine. The Panel has no doubt the Respondents were by use of the Disputed Domain Name seeking to suggest they had a connection with the Complainant in the course of trade, by suggesting that their website was the Complainant's business, or was in some way authorised or licensed by the Complainant to sell luxury products. This is not the case. It does not matter whether or not customers on reaching the Respondents' website realize it is not affiliated to the Complainant. In fact in the present case it is far from clear that any customers would realize this. The Respondents' website has the appearance of a high class retailer of luxury goods and the only disclaimer the Panel could find on the website was buried in a page accessed by clicking a small "about us" link where eventually the text "Note: VogueVip is not belong [sic] to vogue Magazine" can be found (and even this disclaimer seems to have been added only recently in light of the present dispute; a screenshot of the Respondents' "about us" page annexed to the Complaint showed no such language). However the point does not matter – bad faith is established by use of the Disputed Domain Name to attract customers (typically customers who find the Disputed Domain Name as a result of an Internet search). As such the Respondents' behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location".
So far as the other points made by the Respondents are concerned the Panel's views are as follows:
1. The Panel agrees that "vogue" is an ordinary English word. However there is overwhelming evidence that it has acquired an extremely strong secondary meaning in the magazine and fashion fields, which is associated with the Complainant. The Panel is not able to assess the detailed content of all of the other websites the Respondents have referred to which contain the word "vogue" in their names but notes that (a) some of them are associated with the Complainant (e.g., "www.teenvogue.com"); (b) some are in very different fields (e.g., www.voguetyre.com); (c) some are obscure (e.g., "www.vogueviplimo60181.blogspot.co.uk/2013/11"); and (d) in any case it does not amount to a defence to show that there are other domain names in existence which may also be objectionable.
2. It does not matter that the Respondents do not operate a magazine. Their business is clearly seeking to attract customers because of the association between the Disputed Domain Name and the Complainant's trademark.
3. The fact that the Respondents may have invested substantial sums in their business is irrelevant. In any event there is nothing preventing them carrying on that business under another unobjectionable domain name.
4. The Panel in its reasoning above has not attached any weight to the Complainant's suggestion that material sold on the Respondent's website may be counterfeit. There is no evidence in support of this allegation and the Panel discounts it.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <voguevip.com> be transferred to the Complainant.
Nick J. Gardner
Dr. Kaya Köklü
Date: November 25, 2015
1 In this regard the Registrar has confirmed the language of the Registration Agreement to be English, and accordingly the language of this proceeding is English (Rules, paragraph 11(a)). Further, the Respondents have not requested that the proceeding be conducted in a language other than English.