WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Robert McDonough
Case No. D2018-1908
1. The Parties
The Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America (“United States”), represented internally.
The Respondent is Robert McDonough of Las Vegas, Nevada, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <gqme.com> 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 22, 2018. Later on the same day, the Center transmitted, by email, to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2018, 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 that the proceedings commenced on August 31, 2018. In accordance with the Rules, paragraph 5, the Center set the due date for Response to September 20, 2018. The Response was filed with the Center on September 19, 2018.
The Center appointed Peter L. Michaelson, Marylee Jenkins, and James H. Grossman as panelists in this matter on October 19, 2018. 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
As reflected in the registration record for the disputed domain name in the public WhoIs database (a copy of that record appears in Annex A to the Complaint), the disputed domain name was registered on May 15, 2002 and will expire on May 15, 2019.
A. The Complainant’s GQ marks (collectively the “GQ Marks”)
The Complainant and/or its wholly owned subsidiaries (hereinafter all collectively viewed as the Complainant) has registered, in many countries and regions of the world, over 800 marks containing either the letters “GQ” by themselves in block letter or stylized form, and/or with other terms and/or various design elements. A copy of a print-out from the Complainant of a large portion of its portfolio of such marks appears in Annex E to the Complaint. Pertinent details, as noted in the publicly‑accessible Trademark Electronic Search System (“TESS”) database available online at the website of the United States Patent and Trademark Office (“USPTO”), of a few of its United States registrations and of which the Panel takes judicial notice are as follows:
1. GQ (stylized)
United States Registration No. 3,436,617; registered: May 27, 2008
Renewed: March 26, 2018
This service mark is registered for use in connection with: “Promoting the goods and services of others by distribution and transmission of advertisements in the nature of audio, video, text messages and emails via wireless and mobile devices” in international class 35; “Transmission of information through video and audio via digital networks and electronic communications networks” in international class 38; and “Providing information about fashion via wireless mobile devices, satellite, cable and global computer networks” in international class 45. The registrant claims that both first use and first use in commerce of this mark, when used in conjunction with all these services, commenced as of August 1, 2007.
2. GQ (block letters)
United States Registration No. 1,298,799; registered: October 2, 1984
Last renewed: September 26, 2014
This trademark is registered for use in connection with: “Men’s Magazine Dealing with Fashion, Entertainment and Other Topics of General Interest” in international class 16. The registrant claims that both first use and first use in commerce of this mark, when used in conjunction with these goods, commenced as of June 1, 1957.
B. The Parties and their activities
The Complainant is a large, global magazine publisher. Through its unincorporated division, Conde Nast, the Complainant publishes the following widely-circulated magazines, among others: Vogue, Glamour, The New Yorker, Self, Vanity Fair, and GQ. Conde Nast’s magazines have an Internet presence and the company operates, with its affiliates, several websites that incorporate content from many of its magazines.
In 1957, the Complainant launched its GQ magazine which, over the ensuing years, has gained popularity as a monthly men’s fashion and lifestyle magazine. Each month’s edition contains information concerning news and politics, entertainment, women, sports, food and travel, cars, technology products, fashion and style. Currently, the United States edition of GQ has an average monthly audience of over 900,000 subscribers. A copy of the circulation report of the Audit Bureau of Circulation for the September 2016 edition of GQ magazine is provided in Annex C to the Complaint. GQ magazine is also published by the Complainant or through its local licensees in numerous jurisdictions. Further, the Complainant has plans to launch its publication of GQ magazine in the Middle East by the end of 2018.
In addition to its magazines, the Complainant operates a website (a screen shot of a page from that website is provided in Annex D to the Complaint) at the domain name <gq.com>. This site serves as the online home of the United States edition of GQ magazine and contains magazine content, photos, designer profiles, lifestyle and cultural information, as well as third-party advertisements. This website presently receives over two million unique user visits per month. Other websites, related to GQ magazine, are operated by the Complainant or its licensees in many various other countries, including China, France, Germany, India, Italy, Japan, the Republic of Korea, Portugal, the Russian Federation, and the United Kingdom of Great Britain and Northern Ireland.
On June 20, 2018, the disputed domain name resolved to a parking page provided by the Registrar which presented a list of specific categories: “Clothes Fashion”, “Clothing Men” “Fashion Men”, “Men Shirt”; “Men Shoe”, “Men Suit”, “Clothing Ladies”, and “Clothing Shopping” which presumably provided various related links upon an Internet user clicking on any of these categories. On August 6, 2018, the disputed domain name resolved to a similar parking page, also provided by the Registrar, containing similar and, in some cases, identical clickable categories. Copies of these parking pages are correspondingly provided in Annexes F and H to the Complaint. Currently, the disputed domain name does not resolve to any webpage whatsoever.
On July 3, 2018, the Complainant, though its in‑house counsel, sent, by email, a cease and desist letter (a copy of which appears in Annex G to the Complaint) to the Respondent requesting him to cease using the disputed domain name and transfer it to the Complainant. On July 19, 2018, the Respondent replied, by email, to that counsel stating that the Registrar solely formed the parking page including the categories and links shown thereon as part of its “Cash Parking” affiliate program which it and its partners administer and run, and the Respondent’s total compensation from that program had been approximately “$1/ year”. Further, the Respondent stated when he acquired the disputed domain name he searched the USPTO records for any trademark that would conflict with the name and found none. He also stated that although he had one or two perspective buyers “who inquired about this [disputed domain] name back in the mid 2000’s”, he told those parties that the disputed domain name was not for sale. He further stated that owing to the lack of revenue from this program, that, not only did he not have any problem in removing the home page for the disputed domain name, he had instructed the Registrar to do so. Copies of the response dated July 19, 2018, along with all the messages between the parties, specifically including those occurring between July 20, 2018 and July 31, 2018 appear in Annex 5 to the Response.
On July 20, 2018, the Complainant’s counsel replied, also by email, back to the Respondent stating that while she appreciated the removal of all content from the Respondent’s website, she still believed confusion could occur in the future and repeated her prior request to transfer the disputed domain name to the Complainant, though with reimbursement of the Respondent’s costs of registration and transfer, if any as to the latter.
The Respondent, in his July 28, 2018 message to that counsel, opined that there is no evidence that the Registrar’s parking page ever infringed on the Complainant’s mark GQ with the lack of any revenue from the “Cash Parking” program clearly evidencing just that, and thus her demand for transfer of the disputed domain name was unreasonable simply because the disputed domain name <gqme.com> “contains the letters ‘GQ’ ”. He stated that he would be willing to transfer the disputed domain name “with fair compensation for value and not just reimbursement of our actual costs over the last 15+ years”.
Through an email message dated July 30, 2018, the Complainant’s counsel inquired: “[f]or purposes of Settlement Discussion, please indicate what price range you have in mind when you say ‘We would, however, be willing to transfer the domain with fair compensation for value’.”
In response to this message, the Respondent answered, in his email message on July 31, 2018 to that counsel, that he believed the “fair market value of the name to be around $150k to $160k.”
The Complainant’s counsel did not respond to the July 31, 2018 message choosing instead, on August 22, 2018, to file the present Complaint.
5. Parties’ Contentions
(i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to its mark GQ.
Specifically, the disputed domain name contains this mark appended by the term “me”. This term is a common pronoun and may also be understood as an abbreviation for the “Middle East” which the Complainant views as an emerging market for its GQ magazine. The mere addition of this term to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark under paragraph 4(a)(i) of the Policy.
Further, the Complainant alleges that, given its worldwide reputation and publication of numerous international editions of GQ magazine and its websites, and its GQ Marks and upcoming publication of the GQ magazine and website in the Middle East, Internet users who view the disputed domain name will recognize the “GQ” brand and assume the Complainant is somehow connected with the Respondent, while, in reality, it is not. Moreover, consumers seeking information about the Complainant’s GQ Middle East operations are likely to assume the disputed domain name will direct them to a site operated by the Complainant or one of its licensees when, in fact, they would be directed to the Respondent’s website instead.
Hence, the Complainant believes that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy.
Specifically, the Complainant never granted the Respondent any right to either use or register the terms “GQ” or “GQ me” in connection with a domain name or make a bona fide offering of goods or services using either of those terms.
(iii) Registered and Used in Bad Faith
The Complainant also contends that, for various reasons, the Respondent has registered and is using the disputed domain name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Specifically, the Complainant contends that the Respondent registered the disputed domain name for financial gain and to trade on the Complainant’s goodwill and reputation.
Further, the Respondent offered to sell the disputed domain name for an unreasonably high price even though he said that he does not have any intention to continue using the disputed domain name.
In addition, the Respondent has not been using the disputed domain name in connection with bona fide offering of goods and services, but rather, “wanted to generate revenue or attract certain users by using the domain to generate revenue using search engine or pay-per-link models based on the value of the Complainant’s ‘GQ’ brand”.
(i) Identical or Confusingly Similar
Contrary to the Complainant’s position, the Respondent contends that, for any of several reasons, the disputed domain name is not confusingly similar to the Complainant’s mark GQ.
First, the Respondent states that the disputed domain name is nothing more than a generic acronym.
In the more than 16 years during which the Respondent has owned the disputed domain name, he never used it in any of his home pages in the form, as the Complainant references, as “GQme” (where GQ is capitalized and the term “me” is not). The Respondent has always used the disputed domain name as either <GQME.COM> or <gqme.com>. He contends that the Complainant has deliberately referred to the disputed domain name as <GQme.com> to “manufacture some sort of likelihood of confusion with <gq.com> where none exists”.
Further, the lack of revenue provided to the Respondent and generated by the Registrar’s parking page (at a rate of approximately “$1/ year”; that page appearing Annex F to the Complaint) clearly reflects that neither the disputed domain name nor the parking page is confusingly similar to the Complainant’s websites or any of its GQ Marks. Otherwise, had Internet users experienced confusion between the disputed domain name and the Complainant’s marks, there would have been considerably more web traffic to the parking page and consequently more revenue generated by that page than what actually occurred.
(ii) Rights or Legitimate Interests
Also, the Respondent contends, that for either of two reasons, he has rights and legitimate interests in the disputed domain name.
First, the Respondent registered the disputed domain name on May 15, 2002 and since then has paid the costs of annual renewals. Since he registered the disputed domain name, he has not received any question or conflict regarding the disputed domain name from either the Complainant or anyone else until being initially contacted by the Complainant’s counsel on July 3, 2018.
Second, before the Respondent received any notice of the dispute, he used the disputed domain name, for many years, in connection with rental and/or sale of real estate. He has also been considering using the disputed domain name in recent years in connection with the sale of medical equipment and has undertaken extensive related computer research.
(iii) Registered and Used in Bad Faith
The Respondent also contends that he did not register or use the disputed domain name in bad faith.
After he registered the disputed domain name in 2002, he started to use it to promote his real estate interests. Specifically, as shown by screen shots of results provided by the Wayback Machine (accessible at “www.archive.org”), the Respondent posted pages to his website (to which the disputed domain name resolved) on May 18, 2004 which depicted interior and exterior images of one of the Respondent’s rental houses (those screen shots appear in Annex 1 to the Response).
Thereafter, the Respondent ceased using his website as evidenced by a screen shot (which appears in Annex 2 to the Response) provided by the Wayback Machine showing a parking page as it existed on July 31, 2004 stating that “This Domain Unavailable”, along with an accompanying graphical image.
The next change in the Respondent’s home page, as captured by the Wayback Machine, was on February 2, 2011 when the disputed domain name was used to redirect Internet users to the Respondent’s website at “www.webuyland.org” which the Respondent personally used in connection with selling real estate and also to educate others as to the dangers of second-hand smoke and assist them in ceasing smoking. Copies of the screenshot from the Wayback Machine and from the website itself for these home pages respectively appear in Annexes 3 and 4 to the Response.
All this prior use collectively shows that the Respondent never registered, used or intended to use the disputed domain name “for anything resembling GQ.com, Gentlemen’s Quarterly, men’s fashion, accessories, or celebrity whatevers”.
Further, as shown by the archived web pages, the disputed domain name was not registered primarily for the purpose of selling it to the Complainant or to its competitors, or to disrupt the Complainant’s businesses. In that regard, the Respondent has never solicited to sell the disputed domain name <gqme.com> to the Complainant, the Complainant’s competitors, or anyone else in the more than 16 years he has owned it.
In addition, the Respondent states that he has never read one of the Complainant’s GQ magazines.
Lastly, the Respondent contends that the sole evidence which the Complainant presented to show that the disputed domain name had been used to direct users to other websites, that are related to industries in which the Complainant has a significant presence and reputation, is a screen shot of the Registrar’s parking page that was used sometime between June 2, 2013 and the time the page was removed on or about July 19, 2018 either by the Registrar or its specific affiliate which administers the “Cash Parking” program. That parking page did not exist until 2013, more than eleven years after the Respondent registered the disputed domain name on May 15, 2002. Moreover, the Respondent had never seen that parking page until July 3, 2018, when the Complainant’s counsel contacted the Respondent. The Respondent did not assemble that parking page inasmuch as that page itself states at the bottom: “[t[his page is provided courtesy of GoDaddy.Com, LLC.”
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark GQ.
The Complainant has not specifically identified the individual trademark registrations it is asserting against the Respondent and merely points the Panel to the entire list, provided in Annex E to the Complaint, of what appears to be several hundred of its over 800 portfolio of GQ-based trademark registrations – an omission which unnecessarily increases the Panel’s effort. Consequently, to assess confusing similarity, the Panel will apply two of the Complainant’s United States registrations contained in the list and specifically identified above which appear to it to be representative of many of the registrations in the list.
From simply comparing the disputed domain name to the Complainant’s mark GQ, no doubt exists that the disputed domain name is confusingly similar to the mark. The disputed domain name consists of the mark in its entirety to which the term “me” has been appended and to which the generic Top‑Level Domain (“gTLD”) “.com” has then been added, with the addition of the gTLD being irrelevant in this case in assessing confusing similarity or identity under paragraph 4(a)(i) of the Policy and thus ignored.
It is now very well established in UDRP jurisprudence that a minor variation to a mark is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that domain name to avoid user confusion. Here, the Respondent’s addition of the term “me”, which is a common pronoun, clearly resulted in such a minor variation and does not confer sufficient distinctiveness. See, e.g., Calvin Klein Trademark Trust and Calvin Klein Inc. v. Abeer Ayoub, WIPO Case No. D2018-0387; SAP SE v. Lakshmi Reddy Bhumireddy and P. Hareesh, WIPO Case No. D2017-0396; Compagnie Générale des Etablissements Michelin v. Cameron Jackson, WIPO Case No. D2016-2392; Kumfs Brand Limited v. George, WIPO Case No. D2016-1272; Dubizzle Limited BVI v. Rana Anabtawi, WIPO Case No. D2016-0843; and Chicago Mercantile Exchange Inc. and CME Group Inc. v. Domains By Proxy, LLC / Phupinder Gill, WIPO Case No. D2015-1842.
Hence, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on a complete lack of evidence of record presented by the Complainant coupled with the evidence of prior bona fide use supplied by the Respondent, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Specifically, the Complainant states, as the only reason why the Respondent lacks rights or legitimate interests in the domain name, that the Complainant never granted the Respondent a right to use the GQ mark, whether in connection with registering a domain name or basically for anything else. This reason, in and of itself and in the absence of any other pertinent evidence – as here, is insufficient.
The mere fact that a complainant did not give a license or authorize a respondent to use the former’s mark in a domain name is not, by itself, dispositive of a finding that the respondent lacks rights or legitimate interests in the domain name. Under paragraph 4(c)(i) of the Policy, the respondent may either actually use the domain name in connection with a bona fide offering of goods or services or have made demonstrable preparations to so use that domain name prior to receiving notice of a dispute concerning that domain name. That happens to be the case here. UDRP precedent recognizes that, in most instances, a complainant has no evidence in its possession to disprove that a respondent has no rights or legitimate interests in a disputed domain name – as all pertinent evidence under paragraph 4(c) of the Policy usually lies solely with the respondent. Consequently, given the absence of any documentary exchange or other discovery in an ICANN proceeding coupled with the rather summary nature of the proceeding, namely one round of pleadings, the proper approach under such precedent is that once a complainant makes out a prima facie case, to shift the burden to the respondent to prove that, through its actions surrounding the domain name, it has acquired rights or legitimate interests to the domain name. In essence, rather the complainant having to prove its negative assertion, i.e., that the respondent lacks such rights or legitimate interests, the respondent, being in sole possession or knowledge of the underlying evidence, is charged with providing some evidence of the opposite, i.e., that it has such rights or interests. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 2.1.
The Respondent’s actual use of the disputed domain name, over the 16+ year period since he registered it on May 15, 2002, was at best sporadic with separate instances of actual use rather widely spaced apart in time. The Respondent first used the disputed domain name in conjunction with selling real estate sometime during the 2002-2004 timeframe and then, by the Respondent’s own admission, with reference to the screen shots appearing in Annexes 2 and 3 of the Response of respective web pages at the Respondent’s website, did not use the name for seven years, until 2011. The Respondent once again used the disputed domain name in 2011, here too with respect to selling real estate but also providing services directed at educating others concerning the effect of second-hand smoke and cessation of smoking. More recently, the Respondent was evidently planning on using the disputed domain name in conjunction with selling medical equipment and had undertaken related computer-based research, though he submitted no corroborating evidence of his corresponding efforts. This use of the disputed domain name, as limited and as spread over time as it was, is sufficient to rebut any prima facie case said to be presented by the Complainant.
The Complainant provides no explanation as to why it delayed 16 years in both first contacting the Respondent and voicing its objection to the disputed domain name and ultimately filing the present Complaint.
At the same time, however, there is some evidence that the Respondent used the disputed domain name in a manner that reflected products synonymous with the Complainant’s exclusive rights in its GQ marks.
The Panel finds, that, as a result of viewing the unique facts of the sparse record here in their entirety, the Respondent has sufficiently rebutted the Complainant’s case under paragraph 4(c)(i) of the Policy.
C. Registered and Used in Bad Faith
The Panel also finds that there is no evidence of record which would indicate that the Respondent’s actions, with respect to the disputed domain name, constitute bad faith registration.
Specifically, the Complainant alleges, without any corroborating evidence, that: (a) the Respondent registered the disputed domain name for financial gain and to trade on the Complainant’s goodwill and reputation; (b) the Respondent has not been using the domain name in connection with a bona fide offering of goods and services, but rather, “wanted to generate revenue or attract certain users by using the domain to generate revenue using search engine or pay-per-link models based on the value of the Complainant’s ‘GQ’ brand”; and (c) the Respondent intended on generating revenue or attract certain users by using the disputed domain name to generate revenue using search engine or pay-per-link models based on the value of the Complainant’s “GQ” brand. The evidence of record does not support such allegations.
The Complainant also alleges that the Respondent offered to sell the disputed domain name for an unreasonably high price even though he said that he does not have any intention to continue using the disputed domain name. While the Respondent, through his email message to the Complainant’s counsel of July 31, 2018 offered to sell the disputed domain name to the Complainant for a price “around $150K to $160K” which obviously substantially exceeded his costs of registration, the Complainant solicited that offer through a direct query to the Respondent through her immediately preceding email message of July 30, 2018 stating: “[f]or purposes of Settlement Discussion, please indicate what price range you have in mind […]”. As the Complainant, not the Respondent, initiated the settlement discussion and, through doing so, requested the Respondent to specify his sale price – which he did, this does not reflect bad faith by the Respondent. Rather, based on the evidence submitted by the Respondent, once the Respondent actually made this offer, the Complainant did not respond to the offer and chose to file the present Complaint alleging bad faith predicated on such an offer being made without any mention of the fact that the Complainant was responsible for soliciting that offer in the first place. Moreover, while the Complainant stated that the Respondent made such an offer, it was the Respondent, not the Complainant, who produced copies of the underlying email correspondence (in Annex 5 to the Response) between the parties, particularly the messages dated July 30, 2018 and July 31, 2018.
Thus, the Panel concludes that the Complainant failed to meet its burden under paragraph 4(a) of the Policy to provide sufficient prima facie evidence of its allegations with respect to the disputed domain name to warrant the relief it now requests.
For the foregoing reasons, the Complaint is denied.
Peter L. Michaelson
James H. Grossman
Date: November 18, 2018