WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Lola Joseph, Vogue Africa
Case No. D2016-2556
1. The Parties
Complainant is Advance Magazine Publishers Inc. of New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America (“U.S.”).
Respondent is Lola Joseph, Vogue Africa of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <vogueafricang.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 30, 2017. On January 30, 2017, Respondent sent an email communication to the Center requesting general information about the proceeding. The Center provided the information on January 30, 2017. Respondent has not filed or sought leave to file any further submissions.
The Center appointed Stephanie G. Hartung, David H. Bernstein and Ike Ehiribe as panelists in this matter on February 13, 2017. 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
Complainant is a company organized under the laws of the United States that belongs to one of the world’s largest publishers of magazines. Among its magazines is “VOGUE”, a fashion magazine published in numerous countries of the world (though not in Nigeria).
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “Vogue” including, inter alia:
- Word-/device mark VOGUE, Companies and Intellectual Property Commission (CIPC) South Africa, Registration No.: 1958/02593, Registration Date: December 13, 1958, Status: Active;
- Word mark VOGUE, United States Patent and Trademark Office (USPTO), Registration No.: 3069976, Registration Date: March 21, 2006; Status: Active;
- Word mark VOGUE, European Union Intellectual Property Office (EUIPO), Registration No.: 011027570, Registration Date: June 26, 2012; Status: Active.
Respondent, a resident of Nigeria, registered the disputed domain name on June 24, 2016. As of the time of the rendering of this decision, the disputed domain name resolves to a website the layout of which mimics the official VOGUE magazine website at “www.vogue.com”. That website, thus, looks like a website associated with Complainant and designed for viewers in Africa.
From the prior correspondence between the parties submitted by Complainant, it appears that, between June 2016 and November 2016, Respondent contacted Complainant to propose a business relationship and to seek approval to use the VOGUE trademark as the title of a new magazine in Africa named “VOGUE Africa”. Complainant, however, responded through its Nigerian lawyers on November 3 and 17, 2016, demanding that Respondent cancel the registration for the disputed domain name and cease using the VOGUE trademark. There is no record of any further response from Respondent.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends that its “VOGUE” magazine, launched in 1892, is the world’s leading fashion and style magazine for women. Its U.S. edition has an average print circulation of over 1.2 million copies and is read by approximately 12.7 million people every month. In addition to the U.S. edition, “VOGUE” magazine is published (through Complainant’s subsidiaries and/or local licensees) in many countries worldwide. Although Complainant owns trademark registrations for “VOGUE” in many African countries, it has not yet launched an official African edition thereof.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s VOGUE trademark as it incorporates the mark in its entirety with the addition of the geographic word “Africa” and the country code “NG” for Nigeria. Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since she was never granted a right to use or register the VOGUE trademark, either in connection with a domain name registration or a bona fide offering of goods or services or any other reason. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since Respondent makes an unauthorized use of Complainant’s goodwill and reputation for her own personal and commercial purposes.
Respondent contacted the Center on January 30, 2017 requesting general information about the proceeding and assistance in order to “put an end to the dispute and protect the domain name”. Other than that, Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <vogueafricang.com> is confusingly similar to the VOGUE trademark in which Complainant has rights.
The disputed domain name incorporates the VOGUE trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9), that the addition of a generic, descriptive or geographic term to a trademark in a domain name is normally insufficient, in and of itself, to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the geographic term “Africa” and of the country code “NG” for Nigeria does not dispel the confusing similarity arising from the incorporation of Complainant’s VOGUE trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s VOGUE trademark, either as a domain name or in any other way. To the contrary, Respondent has essentially conceded that she needs Complainant’s permission to use the VOGUE trademark (inasmuch as Respondent wrote to Complainant to seek permission). Given that Complainant declined to provide permission and expressly demanded that Respondent discontinues her use of VOGUE in the disputed domain name and on her website, it is clear that Respondent has no rights or legitimate interests in the disputed domain name.
Finally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent uses the disputed domain name for a website that mimics the look of the official “VOGUE” magazine website, e.g. at “www.vogue.com”, which is highly likely to confuse Internet users into believing that this is an official website of Complainant.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 2.0, paragraph 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The use of the disputed domain name, which is confusingly similar to Complainant’s VOGUE trademark, to resolve to a website that mimics the official “VOGUE” magazine website, e.g. at “www.vogue.com”, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to her own website by creating a likelihood of confusion with Complainant’s VOGUE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <vogueafricang.com> be transferred to Complainant.
Stephanie G. Hartung
David H. Bernstein
Date: February 22, 2017