WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Glen Rawlins, Evogue Life Limited
Case No. D2019-0599
1. The Parties
Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented by Natasa Colovic, United States.
Respondent is Glen Rawlins, Evogue Life Limited, United States.
2. The Domain Name and Registrar
The disputed domain name <evoguenewyork.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 March 18, 2019. On March 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2019, 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 March 29, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 23, 2019.
The Center appointed Georges Nahitchevansky, Marylee Jenkins, and A. Justin Ourso III as panelists in this matter on May 28, 2019. 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, Advance Magazine Publishers Inc., is a magazine publisher. Complainant, through its division Condé Nast, publishes a number of publications such as “Vogue”, “Glamour”, “The New Yorker”, “Self”, “Vanity Fair” and “GQ”. Complainant’s “Vogue” magazine is a fashion and lifestyle magazine for women covering many topics including fashion, beauty, culture and living. “Vogue” was launched in 1892 in the United States.
Complainant is the owner of numerous trademark registrations throughout the world for the VOGUE mark, including in the United States. Complainant’s earliest registration for the VOGUE mark in connection with Complainant’s magazine and related products dates back to June 16, 1908, (Registration No. 0069530). Complainant also owns the domain name <vogue.com>, which is used by Complainant to provide “Vogue”magazine content, photos, designer profiles, fashion show video coverage and current apparel line information.
Respondent registered the disputed domain name on October 2, 2017. Respondent has used the disputed domain name for a lifestyle type website that promotes an eau de parfum (“EDP”) stylus. On August 22, 2018, Complainant sent a demand letter to Respondent, at Respondent’s website address in New York City, regarding the disputed domain name. Respondent did not respond and a further demand letter was sent by Complainant to Respondent at Respondent’s Salt Lake City, Utah address on February 12, 2019. No response was received from Respondent. The disputed domain name does not currently resolve to an active website.
5. Parties’ Contentions
Complainant contends that it is the owner of rights in the VOGUE mark on account of its use of the mark since 1892 for a major fashion and style magazine for women and on account of numerous trademark registrations that it owns for the VOGUE mark around the world. Complainant also contends that the VOGUE mark is well known and enjoys a world-wide reputation.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s VOGUE mark as it consists of the VOGUE mark in connection with the geographic location “New York” which is known for being a center for the fashion industry. Complainant maintains that the combination of the disputed domain name with the goods that were offered for sale at the website for the disputed domain name is a blatant attempt to trade on the goodwill associated with the VOGUE mark and increases the likelihood of confusion. In that regard, Complainant points to several prior UDRP decisions and United States Federal Court decisions that have ordered the transfer of, or have enjoined the use of, domain names based on the VOGUE mark. Complainant also relies on a successful challenge of a prior attempt by an undisclosed party to register the mark EVOGUE NEW YORK & Design in the United States Patent and Trademark Office.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has never been given by Complainant the right to use or register the VOGUE or EVOGUE marks, (ii) had no legitimate use or right to use the VOGUE or EVOGUE NEW YORK marks prior to registering the disputed domain name, and (iii) has a not made a valid claim to use the VOGUE mark.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as the facts in the case show that Respondent registered the disputed domain name for purposes of trading on Complainant’s goodwill and reputation and for purposes of selling goods that display the EVOGUE mark in a manner that creates confusion with the VOGUE mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006‑0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the VOGUE mark in connection with its fashion and lifestyle magazine and that it owns numerous trademark registrations for the VOGUE mark around the world, including the United States, that issued well before Respondent registered the disputed domain name.
With Complainant’s rights in the VOGUE mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “gTLD” such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s VOGUE mark as it incorporates the VOGUE mark in the disputed domain name. The addition of the prefix “e” at the beginning of the disputed domain name and the geographic location “New York” at the end of the disputed domain name does not distinguish the disputed domain name from Complainant’s VOGUE mark as they are merely descriptive additions that in the aggregate could be seen as suggesting that the disputed domain name is for an online website related to VOGUE products and services specific to New York.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s VOGUE mark and in showing that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
In this proceeding, Complainant has put forth a very limited body of evidence to support its case. Complainant has in many instances relied on conclusory allegations without providing evidence to support such allegations, and has left out facts that might be helpful to the Panel in analyzing the matter. By way of example, Complainant asserts that it successfully opposed an application for the EVOGUE NEW YORK mark and provides a printout that simply states that the EVOGUE NEW YORK mark was “abandoned after an inter parties decision by the Trademark Trial and Appeal Board.” No details regarding the opposition are provided. The Panel has reviewed the USPTO’s Trademark Trial and Appeal Board records regarding the opposition and notes that an application was filed for the identical EVOGUE NEW YORK stylized mark that was displayed on Respondent’s website at the disputed domain name. However, the EVOGUE NEW YORK stylized mark that was the subject of the opposition had been applied for by an individual apparently unrelated to the Parties in this proceeding. Complainant has provided no explanation for why this opposition is mentioned, how Respondent and this individual might be connected and/or how the opposition might relate to this proceeding involving the disputed domain name. The Panel notes that conclusory allegations that are unsubstantiated with specific evidence are entitled to little or no weight. See WIPO Overview 3.0 at sections 1.3 and 3.1.
In addition to choosing not to participate in this proceeding, Respondent fares no better by not only ignoring Complainant’s demand letters, but also by possibly providing questionable contact information in the WhoIs record for the disputed domain name and on the website at the disputed domain name. The Complaint and exhibits sent by the Center to Respondent at Respondent’s claimed addresses in Salt Lake City, Utah and in New York, New York could not be delivered by DHL.
What the limited evidence that has been submitted in this proceeding shows, none of which Respondent has contested, is that Respondent has used the disputed domain name for a website that featured lifestyle and fashion-like images and which promoted an EDP stylus fragrance product.1 Given Complainant’s rights in the VOGUE mark in connection with a fashion and style magazine for women, it appears that Respondent’s actions were designed to suggest that Respondent’s website at the disputed domain name is affiliated with, connected to or authorized by Complainant, when such is not the case. A consumer visiting Respondent’s website at the disputed domain name would likely believe that the disputed domain name and website are somehow connected to or authorized by Complainant, given (i) the prominent use of VOGUE in the disputed domain name, (ii) the fashion and style like photographs featured on the website at the disputed domain name in connection with the EVOGUE NEW YORK stylized mark that shows EVOGUE in larger letters, (iii) the lack of anything material or prominent on the website dispelling the connection between Respondent and Complainant, and (iv) the use of a New York address for Respondent (the location where Complainant is based) on the website at the disputed domain name.
In addition, Respondent’s actions after receiving at least one demand letter from Complainant further underscore Respondent’s lack of a legitimate interest. Respondent not only ignored the letter and failed to address or correct the concerns raised by Complainant in its demand letter, but instead continued operating its website in much the same way until the instant proceeding was filed, at which time the website at the disputed domain name was taken down. Such actions simply do not demonstrate above-board actions by a party seeking to legitimately offer a product for sale.
Given that Complainant has established with sufficient evidence that it owns rights in the VOGUE mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 website or location or of a product or service on your website or location.”
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant’s VOGUE mark with the letter “e” (which often connotes an electronic or online version) at the beginning of the disputed domain name and the geographic location “New York” at the end of the disputed domain name. In combination, these elements are likely to be viewed by consumers as an online presence for VOGUE that is specific to New York and that is authorized or endorsed by Complainant. This is particularly so given that Respondent, as noted above, has posted fashion and lifestyle photographs on the website at the disputed domain name in order to promote an EDP stylus fragrance product. Simply put, Respondent’s actions and lack of appearance in this proceeding make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s VOGUE mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, section 3.1.4 (and cases cited therein).
That Respondent registered and used the disputed domain name in bad faith is further confirmed by Respondent’s own actions. Respondent ignored Complainant’s demand letters and after receiving such letters continued using the disputed domain name in the same manner. Such actions further undermine the possibility that Respondent was acting in good faith when Respondent registered and started using the disputed domain name to promote a fragrance product.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 <evoguenewyork.com> be transferred to Complainant.
A. Justin Ourso III
Date: June 14, 2019
1 The Panel notes that Complainant has provided some screen shots from Respondent’s website at the disputed domain name. Those screen shots are difficult to read and Complainant has provided no explanation regarding what Respondent is promoting on the website at the disputed domain name. The Panel was able to deduce that Respondent was promoting a fragrance product on the website at the disputed domain name.