WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Registration Private, Domains By Proxy LLC / Phillip Watson
Case No. D2016-1582
1. The Parties
The Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America (“United States”), represented by Sabin Bermant & Gould, LLP, United States.
The Respondent is Registration Private, Domains By Proxy LLC of Scottsdale, Arizona, United States / Phillip Watson of Crosslake, Minnesota, United States.
2. The Domain Name and Registrar
The disputed domain name <selfmagazine.info> 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 3, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2016, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 8, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 9, 2016.
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 Respondent of the Complaint, and the proceedings commenced on August 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on September 9, 2016. The Panel finds that it was properly constituted. 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, The Conde Nast Publications, the Complainant publishes many well-known magazines. Self is one of these magazines. It has been published since 1979, and is world-renowned for its coverage of fitness and lifestyle topics. It reaches nearly 1.5 million readers in the United States each month. The corresponding website, which the Complainant operates at “self.com”, reaches nearly 5 million unique visitors each month.
The Complainant and/or its wholly owned subsidiaries own over 300 trademark registrations in many countries around the world for the word SELF and variations thereof (the “Mark”). For example, the Complainant owns United States Reg. No. 1,120,502 for the word mark SELF, for “magazines for women directed to the subject of fitness in all its aspects,” which was registered on June 19, 1979.
WhoIs information shows the disputed domain name was registered on May 1, 2016. Later that month, the Complainant learned that the Respondent had established the disputed domain name and had set up an email account ([…]@selfmagazine.info) to impersonate an “assistant casting director” for Self Magazine. The Complainant alleges that the Respondent used this email address to engage in a fraudulent financial scheme to steal money from aspiring models.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its registrations of the Mark in several countries, including registrations which predate the registration of the disputed domain name, such as United States Trademark No. 1,120,502, registered on June 19, 1979. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in the Mark.
The Panel also finds that the disputed domain name is confusingly similar to the Mark. “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark.” See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant's trademark SELF in its entirety. The addition of the word “magazine” does nothing to diminish this confusing similarity. As the panel held in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. In the present case, the dominant element in the disputed domain name is the Mark. The word “magazine” is, in light of the nature of the Complainant's goods and services, entirely generic, and in fact exacerbates the potential for confusion.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948 (“after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent”).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(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 organization) 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."
In this case, the Panel credits the Complainant’s assertions that the Complainant never granted the Respondent the right to use or register the Mark, either in connection with a domain name registration or a bona fide offering of goods and services or for any other reason, and that prior to the Respondent's registration of the disputed domain name, the Respondent had no legitimate use or right to use the Self brand. The Panel further determines that the alleged fraudulent activity by email using the disputed domain name is not a legitimate noncommercial or fair use of the domain name.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name, and the Complainant has prevailed on this element of the UDRP.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondent registered the disputed domain name for commercial gain, and to trade on the Complainant’s goodwill and reputation. It appears the Respondent hoped to generate revenue through its use of the Self brand. Furthermore, by impersonating an assistant casting director, the Respondent’s actions likely constituted fraud, unfair and deceptive trade practices, and may have violated criminal law. For these reasons, the Panel finds that the disputed domain name was registered and is being use in bad faith.
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 <selfmagazine.info> be transferred to the Complainant.
Evan D. Brown
Date: September 22, 2016