WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Thai Bui
Case No. D2020-3496
1. The Parties
The Complainant is Advance Magazine Publishers Inc., United States of America (“United States” or “US”), internally represented.
The Respondent is Thai Bui, Hanoi, Vietnam.
2. The Domain Names and Registrar
The disputed domain names <docsavage.store> and <theshadow.store> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 28, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on December 29, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021.
The Center appointed Willem J. H. Leppink, Antony Gold, and Mathias Lilleengen as panelists in this matter on February 4, 2021. 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
The Complainant is one of the world’s leading magazine publishers. Through its unincorporated division Condé Nast, Complainant publishes well-known magazines such as Vogue, Glamour, The New Yorker, and Vanity Fair.
Furthermore, the Complainant is the owner of the fictional characters Doc Savage and The Shadow, which characters were introduced in magazines in 1930s. These characters appeared later in comic books, radio, television, and paperback books.
The Complainant owns numerous trademark registrations for the trademarks Doc Savage and The Shadow worldwide, including, amongst others:
- US trademark registration DOC SAVAGE, No. 3194745, filed on April 25, 2002, and registered on January 2, 2007;
- European Union trademark registration DOC SAVAGE, No. 11550167, filed on February 6, 2013, and registered on August 6, 2013;
- US trademark registration THE SHADOW, No. 1645004, filed on September 25, 1989, and registered on May 21, 1991;
- European Union trademark registration THE SHADOW, No. 002573632, filed on February 12, 2002, and registered on May 30, 2006.
The above-mentioned trademarks are hereinafter referred to as the “Trademarks”.
The Domain Names were registered on May 15, 2020. The Domain Names resolved to the websites “www.theshadow.store” and “www.docsavage.store” (the “Websites”). At the time of filing of the Complaint, the Websites were inactive.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant discovered that the Domain Names had been used as on-line retail stores. On or around November 20, 2020, the Complainant’s lawyers sent a letter to the Respondent requesting them to stop using the Domain Names and to transfer them to the Complainant. The Respondent never responded to the letter. In September 2020, the Complainant’s attorneys purchased one of the goods offered for sale on the Websites, but the goods did not arrive.
The Respondent closed the Websites. They were not accessible at the time of filing the Complaint. The Domain Names are confusingly similar to the Trademarks. The Domain Names consist of the Trademarks. The Respondent was using the Trademarks alone, displayed in a prominent manner on the Websites. The Trademarks are instantly recognizable in the Domain Names and the relevant public will assume that the Complainant and the Respondent are somehow connected.
The Respondent has no rights or legitimate interests in the Domain Names. The Complainant never granted the Respondent the right to use or register the Trademarks in connection with a domain name or an offering of goods and services or for any other reason. Furthermore, the Respondent has no legitimate reason or right to use the names “Doc Savage” or “The Shadow”.
The Domain Names were registered and are being used in bad faith. The Respondent registered the Domain Names for the purpose of trading on the Complainant’s goodwill and reputation and for selling goods in a matter that creates confusion with the Trademarks. Therefore, the Domain Names were registered in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and that the Domain Names are identical or confusingly similar to that mark.
It is undisputed that the Complainant has rights in the Trademarks. This satisfies the Panel that the Complainant has established that it has trademark rights in DOC SAVAGE and THE SHADOW for the purposes of the Policy.
The Domain Names are identical to the Trademarks.
The applicable Top-Level Domains (“TLD”) “.store” in the Domain Names are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test.
Therefore, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Names, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the Respondent has not submitted a response to the Complaint, the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing from which the Panel might conclude the Respondent’s rights or legitimate interests in the Domain Names.
Based on the record in this proceeding, the Panel considers it most likely that the Respondent was aware of the Complainant and would have been aware of the Complainant’s rights when registering the Domain Names. Furthermore, in principle, as set forth in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5, a Respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner.
The Complainant alleges that the Domain Names were not used for bona fide purposes. According to the Complainant, apparel was offered on the Websites, on which the Trademarks were used frequently, but a test purchase made was never delivered. Later the Websites were taken down. Lacking a Response, the Panel, therefore, finds that the use made of the Domain Names cannot be considered as fair use, also as the composition of the Domain Names coupled with the prior use effectively impersonated or suggested sponsorship or endorsement by the Complainant.
In the absence of any reply by the Respondent, the Panel finds it more likely than not that the Respondent registered the Domain Names in order to trade on the goodwill and reputation of the Trademarks through the creation of confusion amongst Internet users. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
The Panel concludes that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Names were registered and are being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
The Panel observes that the Trademarks are registered throughout the world. The Domain Names were registered many years after the registration date of the Trademarks. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Names, which is a requisite for a finding of registration of the Domain Names in bad faith (see AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455; Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261; and, Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026).
By using the Domain Names in the manner in which it did, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Websites, by creating a likelihood of confusion with the Complainant and its Trademarks as to the source, affiliation or endorsement of its Domain Names and Websites, on which the Trademarks were allegedly depicted frequently.
The Respondent has not provided any explanation why it would be entitled to register and/or use the Domain Names which are identical to the Complainant’s well-known Trademarks.
In the absence of a Response from the Respondent, considering the fame of the Trademarks, the Panel is satisfied that the Complainant has shown that the Respondent has registered and used the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <docsavage.store> and <theshadow.store> be transferred to the Complainant.
Willem J. H. Leppink
Date: February 18, 2021