WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Abhishek Singh
Case No. D2020-1154
1. The Parties
The Complainant is Advance Magazine Publishers Inc., United States of America (“US”), represented by Rahul Chaudhry & Partners, India.
The Respondent is Abhishek Singh, India.
2. The Domain Name and Registrar
The disputed domain name <voguetravelhouse.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 May 8, 2020. On May 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2020, 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 the proceedings commenced on May 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on June 15, 2020. 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
The Complainant is a US publisher of internationally well-known magazines such as Vogue, Glamour, The New Yorker, Vanity Fair and GQ, which have wide Internet presence and are published in many jurisdictions worldwide, including India and the United Kingdom (“UK”), where the Complainant operates through its unincorporated division The Condé Nast Publications Inc. The fashion magazine identified by the trademark VOGUE was first published in the US in 1892, being currently sold in around 145 jurisdictions. In India, this magazine was first sold in 1990 and first published in 2007. The US edition of VOGUE is read monthly by 12.7 million people with an average print calculation of over 1.2 million and the Indian edition has reached over 1 million subscribers and an affluent audience of over 3 million. The VOGUE magazine and the mark VOGUE have received many awards and recognitions, being considered as one of the most influential fashion magazines and ranked top well-known trademarks.
The Complainant owns numerous trademark registrations for VOGUE alone or in combination with other word or figurative elements, in many jurisdictions worldwide, of which the following are sufficient representative for the present proceeding:
- Indian Trademark VOGUE (word) No. 315672B, registered on June 11, 1976, in class 16;
- Indian Trademark VOGUE (word) No. 1302833, registered on August 16, 2004, in class 41;
- UK Trademark VOGUE (word) No. 2233777, registered on November 24, 2000, in class 9; and
- US Trademark VOGUE (word) Serial No. 73/823537, Registration No. 1666656, registered on December 3, 1991, in class 16 (collectively the “VOGUE mark”).
The Complainant operates a website under the domain name <vogue.com> (registered on May 17, 1994), which features its magazine content and photos, fashion show video coverage, designer profiles and current apparel line information, as well as ads from luxury brand owners, receiving over 8.5 million page views per month and having over 600,000 unique users every month. The Complainant further operates local websites for various jurisdictions, including India (under the domain name <vogue.in>, registered on February 16, 2005), which gets about 1 million page views per month. Other domain names owned by the Complainant linked to its local websites include <vogue.com.cn> (registered in 1998), <vogue.fr> (registered in 2001), <vogue.it> (registered in 1999), <vogue.co.jp> (registered in 1998), <vogue.co.uk> (registered in 1996) and <vogue.com.tw> (registered in 1997).
The disputed domain name was registered on January 15, 2016. It is linked to a website in English language, providing travel information services, including hotel and flight search and booking services. This website includes in its heading the representation of a paper plane and the words “Vogue Travel House” (the word “vogue” with stylized font, and the words “Travel House” in capital letters), and in its footer an address located in Slough (a location in United Kingdom), a telephone number, email address and reference to various social media logos. Additionally, it includes a “contact us” section with a contact form. The only reference to the owner of the website, in the website itself and in its terms and conditions, is the name “Vogue Travel House”. The prices for the booking services provided are indicated in GBP.
5. Parties’ Contentions
The VOGUE mark is well-known in India and internationally. The Complainant provides many evidences related to this reputation, including sales and subscription figures, international awards and recognitions, as well as Indian surveys (conducted in 1997 and 2019).
The Complainant sent a cease and desist notice and various reminders to the Respondent, through the email provided in the website linked to the disputed domain name, receiving no response. The disputed domain name incorporates the well-known VOGUE mark, adding the terms “travel house” which are not distinctive in relation to the services provided under the disputed domain name. Due to the reputation of the VOGUE mark and the fact that the Complainant is engaged in organizing and conducting various entertainment events under this mark, the disputed domain name creates confusion for consumers riding upon the Complainant’s reputation. Internet users are likely to assume that the disputed domain name and the Respondent’s website are owned, associated, controlled or approved by the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never granted the Respondent any authorization to use the VOGUE mark, and the disputed domain name has been used to generate traffic to the Respondent’s website, riding on the Complainant’s reputed mark.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered in bad faith targeting the Complainant’s trademark, making unauthorized use of its reputation to divert Internet users to the Respondent’s website for its own commercial gain and disrupting the Complainant’s business.
The Complainant has cited several previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing (or threshold) requirement. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name is normally considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. It is further to be noted that the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8 and 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant indisputably has rights in the registered trademark VOGUE, incorporated in the disputed domain name in its entirety followed by the terms “travel house”, which do not prevent a finding of confusing similarity with the mark. The VOGUE mark is recognizable in the disputed domain name, and the gTLD “.com” is a mere technical requirement. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.
The disputed domain name is linked to a website providing travel-booking services that includes prominently the reputed VOGUE mark in its heading as well as in various sections of the site. This website includes in its heading the words “Vogue Travel House” including the word “vogue” in stylized font, and the words “travel house” in capital letters. The same indication (“Vogue Travel House”) is included in the contact information section as well as in the terms and conditions of the site, not containing any other reference to the owner of the site or of the disputed domain name, and not containing any reference to its lack of relationship with the Complainant and its reputed trademark. These circumstances do not show any bona fide intent to use the disputed domain name in connection to a legitimate noncommercial or fair use or to any bona fide offering of goods or services.
A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the reputed VOGUE mark in its entirety. Therefore, the Panel considers that there is a high risk of implied affiliation. The Panel has further assessed the extensive presence in the Internet, continuous use and global reputation of the VOGUE mark, including in India, where the Respondent is apparently located according to the Registrar verification, and in UK where the Respondent’s business may be located according to the content of the website linked to the disputed domain name.
Furthermore, the Panel considers remarkable the Respondent has not replied to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and all the cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases being the “balance of probabilities” or “preponderance of the evidence”, the Panel is prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
All cumulative circumstances of this case point to bad faith registration and use of the disputed domain names: (i) the VOGUE mark is well-known worldwide; (ii) the VOGUE mark is used and well-known in India, where the Respondent is apparently located according to the Registrar verification, and UK where the Respondent’s business is apparently located according to the content of the website linked to the disputed domain name; (iii) the disputed domain name incorporates this reputed mark in its entirety adding terms (“travel house”) that describe the Respondent’s business as a travel booking services website; (iv) the Complainant’s magazine organizes various entertainment and promotional activities which may be considered close to the said travel services; (v) the website linked to the disputed domain name includes prominently the Complainant’s well-known trademark in its heading and various sections; (vi) the only indication in the said website about the identity of the company providing the offered services is “Vogue Travel House”; (vii) there is no indication in this website about the lack of relationship with the Complainant and its reputed trademark; (viii) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name; and (ix) the Respondent has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
On the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used in bad faith, targeting the Complainant’s trademark with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, in an attempt to misleadingly attract Internet users to the Respondent’s website for a commercial gain.
All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <voguetravelhouse.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: June 22, 2020