WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Domains By Proxy LLC / Marculles Brackard, Rock Your Fashion Inc
Case No. DCO2016-0006
1. The Parties
The Complainant is Advance Magazine Publishers Inc., of New York, New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America (“United States”).
The Respondent is Domains By Proxy LLC, of Arizona, United States / Marculles Brackard, Rock Your Fashion Inc, of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <frenchgq.co> 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 February 3, 2016. On February 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 10, 2016 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 February 16, 2016.
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 February 19, 2016. In accordance with the Rules, paragraph 5(a), the due date for filing a Response was March 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on March 11, 2016.
On February 19, 2016, the Center received an unsolicited supplemental filing from the Complainant. The Center acknowledged receipt and advised the Complainant that this document’s admissibility would be referred to the Panel upon appointment.
The Complainant having requested a three-member panel, the Center appointed Gregory N. Albright, Marylee Jenkins, and Richard G. Lyon as panelists in this matter on April 11, 2016. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. 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 Panel finds the following facts from the information submitted with the Complaint.
The Complainant, which does business under the name Condé Nast, publishes many well-known magazines around the world. One of these is GQ (once short for “Gentleman’s Quarterly”), a monthly men’s fashion and lifestyle magazine that was begun in 1957. In addition to the United States edition, GQ is published by the Complainant’s subsidiaries or through local licensees in numerous countries including France. The Complainant also operates a related website at <gq.com> and through licensees or affiliates additional GQ websites in other languages in other countries. Since 2008, the Complainant has published GQ France Magazine and operated a related website at <gqmagazine.fr> in the French language. The Complainant owns hundreds of trademarks for GQ and variations thereof, including registrations in France and the United States.
The disputed domain name was created in 2014. As verified by the Panel, an Internet user who enters the disputed domain name into one’s browser is automatically redirected to the Complainant’s French-language website at <gqmagazine.fr>.
5. Parties’ Contentions
The Complainant’s case turns on the following allegation (Amended Complaint, paragraph 21):
“The [disputed] domain [name] is being used by the Respondent to pose as the current Editor-in-Chief of GQ France, [name redacted], in attempt to garner free merchandize. Entering the disputed domain [name] in a browser address bar results in an unauthorized and unsolicited routing of users directly to the Complainant’s legitimate website, gqmagazine.fr. In addition, Respondent has created an email address using the disputed domain whereby he attempts to deceive and defraud unsuspecting designers into providing him with clothing and fashion accessories.”
The Panel discusses the Complainant’s evidence in support of this charge in Section 6-C below.
A. The disputed domain name is confusingly similar the Complainant’s GQ marks, in which the Complainant has rights by reason of it numerous nationally registered trademarks.
B. The Complainant has never authorized the Respondent to use its GQ marks and the Respondent has never been known by the letters GQ. The use to which the Respondent has put the disputed domain name, described above, is not legitimate. The Respondent has no right or legitimate interest in the disputed domain name.
C. Use of the disputed domain name for a phony email-based scam is clear evidence of bad faith, relying upon the goodwill attached to the Complainant’s marks to commit fraud and unfair trade practices.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Standards Applicable to Default Cases. The Respondent’s default does not automatically result in a decision for the Complainant or constitute an admission of any factual matters pleaded in the Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. As to the latter item, “The Policy requires the Complainant to prove each of the three elements.” Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (emphasis in original).
B. Identical or Confusingly Similar. Paragraph 4(a)(i) of the Policy requires proof of two separate items: rights in a mark and confusing similarity or identity of the disputed domain name with that mark. The Complainant has demonstrated the former with its many registered trademarks for GQ. The latter involves a reasoned but straightforward comparison of the mark with the disputed domain name, which here establishes confusing similarity. The addition of a descriptive word (here, “French”) to the disputed domain name’s dominant feature (“GQ”) does not obviate confusing similarity. Use of the “.co” country code, obviously similar to the common “.com”, adds to the confusion. The Complainant succeeds under this Policy head.
C. Rights or Legitimate Interests. Paragraph 4(a)(ii) of the Policy requires proof of a negative, that the Respondent lacks rights or a legitimate interest in the disputed domain name. This is ordinarily done by the Complainant’s making a prima facie showing that the Respondent lacks rights, after which the burden of production shifts to the Respondent to demonstrate a right or legitimate interest, with the ultimate burden of proof remaining with the Complainant. WIPO Overview 2.0, paragraph 2.1. Here the Complainant makes it prima facie case by showing that it has not authorized the Respondent to use its marks and that the Respondent has never been known by the letters GQ or the term “FRENCHGQ” independently of the disputed domain name. The record reveals no right or legitimate interest on the part of the Respondent. The Complainant succeeds under this Policy head.
D. Registered and Used in Bad Faith. Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the Respondent registered and is using the disputed domain name in bad faith. Registration and use must be separately proven.
The email scheme alleged by the Complainant, quoted above, plainly qualifies as use in bad faith. Since the record shows no other use and the Respondent registered the disputed domain name relatively recently, that use would allow the Panel to infer that the Respondent registered it for that purpose. Check Into Cash, Inc. v. Peter Wolfe, Microtel Ltd., WIPO Case No. D2008-0745. The question for the Panel is whether the Complainant has proven its allegations.
The Complainant’s evidence consists primarily of two letters, each of which is written by a supplier, advertiser, designer, or other business counterpart of the Complainant. The Complaint does not spell out the precise relationship. Amended Complaint, Annexes H, J. Annex J by itself is of little help, as no correspondence from the Respondent at the applicable email address is included and the scheme is not set out in a fashion comprehensible to the Panel. Though its author was confused by something, the only references to the improper activity alleged by the Complainant in this Annex are conclusionary comments from the Complainant’s employees.
Annex H however includes two emails sent from the accused web address to the supplier and a direct statement by that third party claiming impersonation or misrepresentation. It comes from a customer or advertiser, which should be the group of greatest concern to a markholder.
The Complainant also provides a screen shot of a press release (Amended Complaint, Annex K) apparently published through a third party industry service. The Complainant does not explain this, but from visiting this service’s website, it appears to provide free press release distributions. The screen shot from this website includes the Complainant’s mark and the accused email address – possibly an impersonation of the Complainant. The Annex J letter writer refers to this press release on the third party website and may have believed it originated with the Complainant.
The Complainant levels serious charges at the Respondent – in the Complainant’s words, the Respondent’s conduct “may violate criminal law” (Amended Complaint, paragraph 34). Far more evidence than that laid out above would be required in court to sustain such charges. Surely, the Complainant or its representative could have provided more evidence, or at least a coherent explanation of how the evidence included with the Complaint ties together to demonstrate the alleged impersonation scheme. Not doing so needlessly complicates the Panel’s task regarding the allegations in the Complaint and in what should be an open-and-shut case. See Cincinnati Bell Inc. v. Bubble Bubble, WIPO Case No. D2014-0927.
The evidentiary standard in a Policy proceeding is broad but unspecific: “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Rules, paragraph 12(d). Policy precedent generally supports use of a preponderance of the evidence standard – in the words of many panels, “more likely than not.” WIPO Overview 2.0, paragraph 4.7, Consensus View. That this standard, obviously far less strict than what would be used in a criminal proceeding, differs from what might be applied in court is not inappropriate given that all that is at stake in a UDRP proceeding is entitlement to a domain name and, more importantly, that a UDRP panel’s decision and findings are of no force or effect in subsequent litigation involving the same conduct.
Applying the preponderance of the evidence standard to this case’s record, the Panel finds that the Complainant has proven bad faith. Though its evidence could have (and probably should have) been more complete and better explained, the two third-party letters, the two offending emails, and the apparently false press release suffice to sustain the Complainant’s charges. The Complainant succeeds under this Policy head as well.
E. Mutual Jurisdiction. As the Panel orders transfer of the disputed domain name, the Mutual Jurisdiction consented to by the Complainant may come into play.1 So the Panel must address the admissibility of the Complainant’s Supplemental Filing, in which the Complainant seeks a second amendment to the Complaint to change its selected Mutual Jurisdiction from Maricopa County, Arizona, the location of the Registrar’s principal office, to New York County, New York, the location of the Respondent Marculles Brackard.
Supplemental filings are disfavored as inconsistent with the expedited resolution of Policy proceedings and are normally admitted only in “exceptional circumstances.” WIPO Overview 2.0, paragraph 4.2. That usually means allowing addition only of a matter that a party could not reasonably have anticipated when filing its initial pleading. A.T. Ferrell Company, Inc. v. David Ibach Jr. / Ferrell-Ross Roll Manufacturing, Inc., WIPO Case No. D2015-0156. The Complainant’s stated basis for its desired amendment is the Registrar’s disclosure of the Respondent’s name and address, which had previously been hidden behind a privacy service registration. But the Complainant learned of this information prior to the filing of its Amended Complaint, indeed pleading the Respondent’s New York address in both the caption and body of that document. There was nothing exceptional post-Amended Complaint justifying another amendment. The Panel disallows the Complainant’s Supplemental Filing, noting that its doing so does not prejudice the Respondent.
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, <frenchgq.co> be transferred to the Complainant.
Richard G. Lyon
Gregory N. Albright
Date: April 20, 2016
1 Mutual Jurisdiction is defined in the Rules, paragraph 1, as “a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.” Mutual Jurisdiction is the jurisdiction in which the Complainant agrees to submit to jurisdiction with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name. Rules, paragraph 3(b)(xii).