WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc. v. Privacy.co.com - af703, Savvy Investments, LLC Privacy ID# 876696

Case No. D2019-2505

1. The Parties

Complainant is Advance Magazine Publishers Inc., United States of America (“United States” or “U.S.”), represented by Advance Legal, United States.

Respondent is Privacy.co.com - af703, Savvy Investments, LLC Privacy ID# 876696, United States.

2. The Domain Name and Registrar

The disputed domain name <gqmusic.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On October 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 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 received multiple informal email communications from a party identifying itself as Respondent on October 15, 2019, in which the sender offered to transfer the disputed domain name to Complainant. Pursuant to paragraph 17 of the Rules, Complainant requested the suspension of the proceedings for settlement proceedings on October 17, 2019. The proceedings were suspended from October 17, 2019, until November 18, 2019. The proceedings were reinstituted on November 18, 2019.

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 November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. Respondent did not submit a formal response. The Center notified the Parties of Respondent’s default on December 10, 2019. Pursuant to paragraph 6 of the Rules, the Center informed the Parties that it would proceed with panel appointment on December 10, 2019, and subsequently on January 8, 2020, notification was given of the appointment of an administrative panel consisting of Ingrīda Kariņa-Bērziņa, Marylee Jenkins, and Scott R. Austin. 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 United States-based media company which, through its unincorporated division, Condé Nast, publishes numerous magazines, including GQ Magazine, a men’s fashion and lifestyle magazine published since 1957 under the two-letter trademark GQ (the “GQ Mark”). The magazine is published monthly in the United States and through local licensees in numerous countries. Complainant asserts that the U.S. edition of the magazine reaches an average monthly audience of over 6 million print readers, 9 million unique digital readers, 104 million video views, and over 11 million social media followers.

According to public record and evidence submitted by Complainant, Complainant registered the domain name “gq.com” on May 17, 1994, through which consumers access its primary website at “www.gq.com” since 1998 for its GQ magazine services.

Complainant owns over 500 trademark registrations corresponding to or including the GQ Mark as shown in a print-out of its international and United States portfolio of marks attached in the Annexes to its Complaint. The Panel takes judicial notice of some of its United States registrations noted in the Trademark Electronic Search System (“TESS”) database available online at the website of the United States Patent and Trademark Office (“USPTO”), including:

- United States Trademark Registration No. 1298799 for GQ (word mark) registered for goods in International Class 16 on October 2, 1984, claiming a first use date at least as early as June 1, 1957;

- United States Trademark Registration No. 2956663 for GQ (stylized mark) registered for goods and services in International Classes 16 and 41 on May 31, 2005, claiming a first use date at least as early as April 1, 2002;

- United States Trademark Application No. 88613010 for GQ MUSIC (word mark) filed on an

intent-to-use basis for services in International Classes 38 and 41 on September 11, 2019.

The disputed domain name was registered on May 1, 2001. A screenshot of the website submitted by Complainant shows that the page currently displays an image of text printed on a sheet of paper, namely

“GQ Music
GQMusic.com
GQ Music Coming Soon
Registered trademark 05/01/2001 ®.”

Complainant also submitted a screenshot of an earlier webpage to which the disputed domain name resolved on which Respondent listed links to, among other topics, information on music and magazine subscriptions.

The record also contains evidence submitted by Complainant of two notice letters sent by Complainant’s counsel to Respondent in respect of the disputed domain name in August 2019 and September 2019. The record contains no responses in respect of these letters.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows.

Under the first element, Complainant alleges that GQ Magazine features information on news and politics, entertainment, music, men, sports, food and travel, cars and technologies products, and fashion and style. Respondent has registered a domain name which consists of Complainant’s GQ Mark. The website of Respondent displays a logo consisting of the letters “gq” and the word “music”, wherein the “gq” element is displayed in all capital letters. Respondent has also displayed the <gqmusic.com> domain name in the same way. Said website was used by Respondent to promote music and magazine subscriptions, while Complainant has been the world’s leading publisher of a men’s style magazine for half a century, and its coverage included music and the music industry. In light of Complainant’s worldwide reputation and publication of various editions of GQ magazine, consumers will instantly recognize the GQ brand in the domain name and assume a connection thereto. There is no doubt that the use of the domain name will cause consumer confusion. Respondent’s use of the mark is trading on Complainant’s long history, reputation, and goodwill in the mark, exacerbating likelihood of confusion and establishing bad faith.

Under the second element, Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name. Complainant has not granted Respondent the right to use or register the GQ or GQ MUSIC Marks for any reason. Prior to registration of the domain name, Respondent had no legitimate use or right to use the GQ or GQ MUSIC mark, nor had Respondent made any valid claim to said Marks.

Under the third element, Complainant alleges that Respondent registered the domain name for the purpose of trading on Complainant’s goodwill and reputation and for the purpose of attracting Internet users to its website. The motive to do so was to profit from the sale of magazine subscriptions through a website that consumers would believe was associated with the famous GQ brand. On information and belief, Respondent has made false statements on its website by alleging that it has a registered trademark. For these reasons, the domain name was registered in bad faith.

Complainant requests transfer of the domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the GQ Mark through registrations in jurisdictions around the world, including the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s GQ Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the GQ Mark, since the disputed domain name contains the GQ Mark in its entirety. The addition of the dictionary term “music” does not prevent a finding of confusing similarity as Complainant’s Mark is clearly recognizable within the disputed domain name.

Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the Domain Name, even if it has acquired no trade mark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, adding the dictionary term “music” to Complainant’s Mark, cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the GQ Mark with permission of Complainant. Rather, the record supports Complainant’s claim that such permission does not exist. Complainant’s rights in the GQ Mark predate the registration of the disputed domain name by nearly 50 years. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to timely file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the similarity between Complainant’s distinctive GQ Mark and the disputed domain name, the fact that Respondent previously offered magazine subscriptions through the website to which the disputed domain name resolved, thereby misleading Internet users who would associate the GQ Mark with magazine subscriptions, further supports a finding of lack of rights or legitimate interests.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the disputed domain name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the disputed domain name e in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith under Policy paragraph 4(b)(iv). The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the GQ Mark significantly predate the registration of the disputed domain name. The GQ Mark is highly distinctive in respect of the goods and services for which it is registered and used. The disputed domain dame contains Complainant’s GQ Mark in its entirety. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad-faith use both in previous and current iterations of the website to which the disputed domain name resolves. The previous website offered consumers magazine subscriptions and advice on music, which is use of the Complainant’s GQ Mark in connection with goods or services that Complainant itself offers. The website to which the disputed domain name currently resolves displays the term “gq music” in a way that is identical to Complainant’s GQ Mark, namely, the letters “g” and “g” are capitalized and distinct from the other verbal elements. Also, the website, by displaying the “®” symbol, falsely asserts that Respondent owns a trademark registration for GQ MUSIC.

Respondent has failed to file any response or provide any evidence of actual or contemplated good-faith use and Respondent concealed its identity through use of a privacy service. According to Complainant, after it sent its first notice letter to Respondent in August 2019, Respondent changed its contact information in the Whois database.

In the view of the Panel, such circumstances, taken together, clearly indicate that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 <gqmusic.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Presiding Panelist

Marylee Jenkins
Panelist

Scott R. Austin
Panelist
Date: January 22, 2020