WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc. v. Domains By Proxy, LLC / Aruno Henry

Case No. D2019-1392

1. The Parties

Complainant is Advance Magazine Publishers Inc., United States of America (“United States” or “US”), represented internally.

Respondent is Domains By Proxy, LLC, United States / Aruno Henry, Japan.

2. The Domain Name and Registrar

The disputed domain name <condenastjp.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 June 17, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2019, 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 Complainant on June 20, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 21, 2019.

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 Respondent of the Complaint, and the proceedings commenced on June 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2019.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 7, 2019. 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

Complainant is a magazine publisher. Through its unincorporated division, Condé Nast, Complainant publishes famous magazines as Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ, which have also a large Internet presence.

Complainant owns numerous trademarks protected throughout the world which feature the CONDE NAST sign, in whole or in part, including the following trademarks:

- Canadian Trademark Registration CONDE NAST No. TMA921181 registered on November 24, 2015 in class 0.
- European Union Trademark Registration CONDÉ NAST No. 2652022 registered on April 7, 2004, in classes 9, 14, 16, 18, 35, 36, 38, 41, 42, 43, 44, among others.
- US Trademark Registration CONDE NAST No. 4455621 registered on December 24, 2013, in classes 38, 41 and 42.
- US Trademark Registration CONDE NAST No. 4232868 registered on October 30, 2012, in 35.

In addition to its magazines, Complainant operates the website “www.condenast.com” relating to Condé Nast’s brands and their news. Complainant also operates the domain name <condenast.jp> in Japan which was registered on July 17, 2012.

Respondent owns the disputed domain name <condenastjp.com> registered on August 25, 2018.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name <condenastjp.com> is confusingly similar to its trademark CONDE NAST. Indeed, Complainant states that the disputed domain name incorporates entirely its trademark. Complainant argues that the adjunction of the letters “j” and “p”, representing Japan, does not change the overall impression of the disputed domain name, and therefore, does not avoid the likelihood of confusion in the public’s mind.

Complainant also states that Respondent uses email addresses to falsely impersonate the identity of Complainant’s employees, which indicates that Respondent is willing to cause consumer confusion.

Complainant argues that Respondent has no rights or legitimate interests or any granted right or license in respect of the disputed domain name. Furthermore, the disputed domain name is not used in connection with an active website and therefore has not been used in connection with a bona fide offering of goods or services.

Complainant indicates that Respondent registered and used in bad faith the disputed domain name. Complainant states that Respondent is intentionally using the confusingly similar disputed domain name for commercial gain, and to trade on Complainant’s goodwill and reputation and fraudulently obtain valuable merchandise free by deceiving merchants as to their identity and affiliation with Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions and is therefore in default.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:

(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 to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Taking the foregoing provisions into consideration the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that Complainant has duly shown trademark rights over the CONDE NAST sign.

Complainant has shown valid rights for said sign inter alia in the United States where Respondent Domains by Proxy, LLC is based. Although Complainant has not shown trademark rights in Japan where Respondent Aruno Henry is based, the Panel notes that it is not per se required to prove trademark rights in the territory where a respondent is based.

The disputed domain name includes entirely the CONDE NAST trademark associated to the combination of letters “jp” referring to the ISO code of Japan. Previous UDRP panels have found that when a domain name includes dictionary terms, which is the present case with the addition of the “j” and “p” letters representing Japan, such terms do not change the overall impression of the disputed domain name, and therefore, this does not avoid a finding of confusing similarity.

Numerous UDRP panels have recognized that “incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark”. (See for instance Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323).

Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s prior trademark.

Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.

Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of proof shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see section 2.1 of the WIPO Overview 3.0).

Complainant’s arguments in the “rights or legitimate interests” section is quite succinct but the latter has provided detailed elements as to the situation surrounding the disputed domain name in the “factual and legal grounds” which are sufficient, in the Panel’s view to be able to conclude in this case, especially considering that Respondent has not replied to the Complaint. (See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493: “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

Complainant claims that it has granted no license nor authorization to Respondent to make any use of the Complainant’s trademark. Thus, Complainant contends that Respondent is not related in any way to the Complainant’s business.

Thirdly and most of all, Respondent sent fraudulent emails from email addresses “[…]@condenastjp.com” (which highly resemble the official “@condesnast.jp” email addresses of Complainant), pretending to be Complainant’s employees to conduct a phishing scheme. The maneuver consisted in writing to brands or publishers requesting designer goods. Of course, Respondent never returned these goods nor did it provide a compensation for those products.

Obviously, such behavior cannot lead to the acknowledgement of rights or legitimate interests (see Bouygues v. Anonymous, WIPO Case No. D2018-1898).

Finally, the website at <condenastjp.com> is not operational, which further shows the lack of rights or legitimate interests of Respondent in the disputed domain name.

The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.

Complainant argues that Respondent registered and used the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, Complainant claims that Respondent violated the Policy, paragraph 4(b)(iv) by using the disputed domain name to intentionally attract, for commercial gain, Internet users.

Previous UDRP panels have found, under similar circumstances, that by registering a confusingly similar domain name and impersonating an employee with the purpose to obtain revenues or profit through its trademark reputation and goodwill shows bad faith both in registration and in use (see Advance Magazine Publishers Inc. v. Domain Privacy, Domain Privacy ApS and Lorraine Jasper, WIPO Case No. D2017-1438: “Complainant alleges that, pursuant to paragraph 4(b) of the Policy, Respondents registered the Disputed Domain Name for commercial gain, and to trade on Complainant’s goodwill and reputation. Respondents clearly hoped to generate revenue or to profit through its use of the Condé Nast Marks. Furthermore, by impersonating an editor and/or coordinator, Respondents’ action constitutes fraud, fair and deceptive trade practices. Complainant argues that for these reasons the Disputed Domain Name was registered and is being used in bad faith”).

The disputed domain name has been registered and used to impersonate one of Complainant’s employees by fraudulent emails, showing a phishing scheme.

The Panel therefore finds that the circumstances of this case strongly demonstrate that Respondent has both registered and used the disputed domain name in bad faith.

Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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 <condenastjp.com> be transferred to Complainant.

Nathalie Dreyfus
Sole Panelist
Date: August 21, 2019