WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc., The Conde Nast Publications Limited v. Dean Aslett / Whoisguard Protected, Whoisguard, Inc.
Case No. D2016-1787
1. The Parties
The Complainants are Advance Magazine Publishers Inc. of New York, New York, United States of America ("United States") and The Conde Nast Publications Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Sabin Bermant & Gould, LLP, United States.
The Respondent is Dean Aslett of London, United Kingdom, self-represented / Whoisguard Protected, Whoisguard, Inc. of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <vogue-asia.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2016. On September 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2016, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2016. The Response was filed with the Center September 24, 2016.
The Center appointed Alistair Payne, Mark Partridge and Steven A. Maier as panelists in this matter on November 1, 2016. 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 Advance Magazine Publishers Inc. (the "First Complainant"), through one of its divisions, The Conde Nast Publications, Inc. (the "Second Complainant") is an international publisher of various well-known magazines. In particular the Second Complainant has published "Vogue" magazine for women since 1892. There are various country-specific editions of Vogue magazine, including the United States version and the United Kingdom version, and also editions published by local licensees in a range of countries including Australia, China, India, Japan, the Republic of Korea and Thailand.
Since 2000 the Second Complainant has operated a website at "www.vogue.com" and at "www.style.com" and the former site attracts more than 8.5 million page views per month and over 600,000 users each month. The First Complainant's subsidiaries and licensees also operate other websites in various countries worldwide. Since 2005 the Second Complainant's Chinese affiliate has published Vogue China and operated the corresponding website at "www.voguechina.com.cn" which is viewed by over 30 million users every month and enjoys more than 320 million page views per month.
The First Complainant owns numerous trade mark registrations for VOGUE worldwide, but in particular word mark registration 2233777 in the United Kingdom, registered on November 24, 2000, European Union Trade Mark registration number 011027570 for the VOGUE word mark, registered on June 26, 2012, and United States word mark registration 3069976, registered on March 21, 2006.
The Respondent, based in the United Kingdom, registered the disputed domain name on March 23, 2016 and operates a website based in Hong Kong, China at the disputed domain name. The website reports on Hong Kong focused business, retail, show business and brands. It also includes a blog under the title "Hong Kong Vogue Fashion News", which contains various opinions and a critique of Lane Crawford, a Hong Kong-based department store.
5. Parties' Contentions
The Complainants submit that the First Complainant owns many trade mark registrations worldwide for the VOGUE mark and have submitted a listing of the First Complainant's registrations including those in the United Kingdom, the European Union and the United States, as noted above. The Complainants say that in view of Vogue's worldwide reputation and its publication of various international editions and associated websites as outlined above, that Internet users will assume that the disputed domain name are affiliated with, or sponsored or endorsed by the Complainants and therefore the disputed domain name is confusingly similar to the First Complainant's VOGUE mark.
As far as the second element of the Policy is concerned, the Complainants submit that the Respondent was never granted the right to register or use its VOGUE mark, either in connection with a domain name registration, or a bona fide offering of goods or services, or for any other reason.
In relation to registration and use in bad faith, the Complainants submit that this is a classic case of cybersquatting under the Policy in which the Respondent has registered the disputed domain name in order to make an unauthorized use of the Complainants' goodwill and reputation for his own personal and commercial purposes and to disrupt the business of the Complainants and of the Lane Crawford department store in terms of paragraph 4(b)(iii) or 4(b)(iv) of the Policy. The Complainants note that in June 2016 the Complainants' Chinese counsel communicated by email with Whoisguard, a privacy protection service, in order to ascertain the Respondent's contact details. In July 2016 the Complainants' counsel sent a cease-and-desist letter to the Respondent demanding cessation of use of the name "HK Vogue" and of the disputed domain name, but that no response was received from the Respondent.
The Respondent submits that he is a frequent visitor for business purposes to Hong Kong and intends to use the disputed domain name for a future business in Hong Kong. He notes that due to legal threats by the Complainant, he has re-directed the disputed domain name to one of his other websites until the matter is resolved.
The Respondent says that the word "vogue" has various dictionary meanings and that the Complainant does not have a monopoly on its use. He further says that his website at the disputed domain name is a genuine news reporting website concerning Hong Kong business, news, nightlife and criminal activity and contains genuine articles and photographs and links to articles on relevant sites. He says that as the Complainant has no business in Hong Kong and considering that the website at the disputed domain name features a different logo, page fonts, page style, colours and favicon, there can be no confusion.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants have demonstrated that the First Complainant owns registered trade mark rights for the VOGUE mark in many jurisdictions, including trade mark registration 2233777 in the United Kingdom, European Union Trade Mark registration number 011027570 and United States registration 3069976. The Panel notes that the Complainants have used the VOGUE mark for Vogue magazine and related websites in many countries, and in a large number of Asian jurisdictions, including Australia, China, India, Japan, Korea and Thailand. Not only does the Second Complainant have a global website at "www.vogue.com" but the Complainants have country-specific sites such as "www.voguechina.com.cn". Based on the statistics provided by the Complainants, as noted above, both these sites have attracted a huge number of Internet users. As a result of this longstanding use in relation to its magazine and on-line publications, the Panel finds that the VOGUE mark has developed a significant degree of international renown.
The disputed domain name wholly incorporates the VOGUE mark as the first and key element and then includes a hyphen together with the word "Asia". Neither of these terms distinguishes the disputed domain name from the VOGUE mark, as "Asia" is purely of geographical significance and a geographical descriptor. In the circumstances of the Complainants' use of the VOGUE mark around the world, the disputed domain name is likely to be incorrectly associated by Internet users with the Complainants' various publications and businesses in Asia. As a result the Panel finds that the disputed domain name is confusingly similar to the First Complainant's VOGUE mark and the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainants have submitted that they never granted the Respondent the right to register or use the VOGUE mark, either in connection with a domain name registration, or a bona fide offering of goods or services, or for any other reason and that therefore the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent says that the Complainants do not have the sole right to use the term "vogue" and that his website at the disputed domain name is a genuine news reporting website concerning Hong Kong business, news, nightlife and criminal activity and contains genuine articles, photographs, and links to articles on relevant sites, in particular in relation to the Lane Crawford retail business.
Firstly, the Panel does not consider that the website at the disputed domain name is a legitimate noncommercial website set up only for the purposes of criticism or the provision of news. The website has a distinctly commercial focus and appears to include sponsored advertisements relevant to its readership.
Secondly, the Panel is of the view that a legitimate interest cannot be established where the evidence suggests that registration was for the purpose of benefiting from a complainant's trade mark, even where that trade mark can also be used as a common term.
In the Panel's view and also for the reasons set out in Section C below, the Panel finds that the Respondent has not rebutted the prima facie case made by the Complainants and that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly the Complainants succeed under the second element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered in March 2016, many decades after the First Complainant first commenced using its VOGUE mark in the United States, the United Kingdom, and internationally, and 11 years after the First Complainant commenced using the mark through its licensee in China. As noted above the Panel finds that the Complainants have developed a truly international business and that correspondingly a very significant degree of renown attaches to the VOGUE mark in relation to the Complainants' magazine and on-line publication businesses, which are largely but not exclusively, focused on fashion. In these circumstances, the Panel infers that the Respondent, based in the United Kingdom, must have been aware of the First Complainant's VOGUE mark and the degree of repute attaching to it when he registered the disputed domain name in 2016. The fact that he chose to use a privacy service for this registration only serves to reinforce the Panel's view in this regard.
Under paragraph 4(b) (iv) of the Policy using a domain name intentionally to attract, for commercial gain, Internet users to a 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 the website or location, or of a product or service on the website or location, amounts to evidence of registration and use in bad faith for the purposes of this section of the Policy.
In this case the Respondent appears to be using the disputed domain name in order to attract Internet users to its website. The Respondent's website includes articles on fashion and sponsored advertisements and overall appears to the Panel to be commercial in nature. Internet users seeing the disputed domain name featuring the VOGUE mark and arriving at the Respondent's website, which also deals with fashion related topics, would be more likely than not to consider that there exists some sponsorship, affiliation or endorsement of the website by the Complainants. As a consequence of the degree of renown attaching to the VOGUE mark in relation to the fashion industry, this is the case even if the website at the disputed domain name features a different logo, page fonts, page style, colours and favicon. The Panel notes that in similar circumstances concerning the VOGUE mark and its registration together with a geographical identifier in a domain name that resolves to a commercial website, previous UDRP panels have made similar findings (see Advance Magazine Publishers, Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, WIPO Case No. D2004-1068). For these reasons the Panel finds that the requirements of paragraph 4(b)(iv) are met.
Further, to the extent that the Respondent may be using the disputed domain name for the purposes of a campaign against the Lane Crawford retail business, it is still not legitimate for the Respondent to take unfair advantage of the reputation and goodwill attaching to the First Complainant's trade mark by attempting misleadingly to associate his website with that trade mark.
As a result the Panel finds that the Respondent has registered and used the disputed domain name 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 <vogue-asia.com> be transferred to the Complainants.
Steven A. Maier
Date: November 15, 2016