WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Black Card LLC v. Giuliano Canovese, Spiritual Sun Wellness and Spa Limited

Case No. DEU2021-0028

1. The Parties

The Complainant is Black Card LLC, United States of America, represented by Notarbartolo & Gervasi S.p.A., Italy.

The Respondent is Giuliano Canovese, Spiritual Sun Wellness and Spa Limited, Malta, represented by Nicolosi & Partners, Italy.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <luxury-magazine.eu> (the “Disputed Domain Name”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the Disputed Domain Name is PDR Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 29, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the Disputed Domain Name. On September 30, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2021. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was November 23, 2021.

On October 19 and October 20, 2021, the Respondent sent informal emails.

On November 23, 2021, the Respondent filed a Response. In response to a notification by the Center that the Response was administratively deficient, the Respondent filed an amended Response on November 29, 2021.

The Center verified that the amended Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules.

The Center appointed Nick J. Gardner as the sole panelist in this matter on December 13, 2021. 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant, Black Card LLC, is a privately held financial services company that provides credit cards and card loyalties to clients through its Mastercard Titanium Card, Mastercard Black Card, and Mastercard Gold Card. It also publishes “Luxury Magazine”, a digital and printed publication. The magazine covers topics such as travel, design, technology, and fashion and is available online at “www.luxurymagazine.com” (the “Complainant’s Website”)

The Complainant owns European Union trademark registration for the words LUXURY MAGAZINE No. 013188255 LUXURY MAGAZINE (word mark) in classes 16 and 41 filed on August 20, 2014 and granted on March 17, 2015 (the “LUXURY MAGAZINE trademark”). The registration is in respect of the following goods and services:

“16 Printed periodical, namely, a business and lifestyle magazine featuring articles and information in the fields of travel, fashion, jewelry, culture, art, literature, leisure, shopping, entertainment, health, beauty, fine dining, wine, culinary arts, cigars, automobiles, yachts and boats, consumer electronics, home and interior design, real estate, finances, society and celebrity.

41 Providing an on-line publication in the nature of a business and lifestyle magazine featuring articles and information in the fields of travel, fashion, jewelry, culture, art, literature, leisure, shopping, entertainment, health, beauty, fine dining, wine, culinary arts, cigars, automobiles, yachts and boats, consumer electronics, home and interior design, real estate, finances, society and celebrity.”

The Complainant also owns a further trademark for the term LUX MAGAZINE but the Panel has not found it necessary to consider that further as it adds nothing to the case based upon the LUXURY MAGAZINE trademark.

The Disputed Domain Name was registered on April 30, 2020. It resolves to a website which is entitled “Luxury Magazine” (the “Respondent’s Website”).

In evidence is the Wikepedia definition of “luxury magazine” as follows: “printed or online magazine marketed to the ultra-affluent that feature high-value products like sports cars, jewelry, mechanical watches, real estate, yachts, private jets and exotic vacations.” Both the Complainant’s Website and the Respondent’s Website appear to fall within that description.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Disputed Domain Name is similar to the LUXURY MAGAZINE Trademark – it simply has a hyphen between the words “luxury” and “magazine” if the suffix is ignored.

The Respondent has no rights or legitimate interests in the term “LUXURY MAGAZINE”. The Complainant says the Respondent is using the Disputed Domain Name to “distinguish [sic] an online magazine that covers the same topics as the one of the Complainant. This obviously causes a likelihood of confusion and is misleading for the relevant public. Therefore, such use cannot be qualified as a ‘legitimate non- commercial or fair use’”.

In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says that the Respondent was aware of the Complainant at the time of registration of the Disputed Domain Name and considering that the Respondent is using a very similar domain name to “distinguish” [sic] a magazine covering the exact same topics, it is likely that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

B. Respondent

The Respondent says the term “luxury magazine” is entirely descriptive and is not even the Complainant’s core business and its use by the Complainant has not acquired any secondary meaning.

The Respondent says that prior to any notice of the dispute, the Respondent has used the Disputed Domain Name and a name corresponding to the Disputed Domain Name in connection with the offering of goods or services. The Respondent says its first “notice of dispute” was the Complainant’s “cease and desist letter”. dated October 19, 2021. It says that prior to this date by more than a year, the Respondent had used the Disputed Domain Name to promote its own print and digital luxury magazine and provides an annex to the Response a copy of its “Luxury Magazine” it says was published in summer 2018¹ . The text of this magazine is in Italian. It also says it has registered and used the similar domain <luxury-magazine.it> from April 11, 2018. As a consequence it says it has been using the Disputed Domain Name in connection with a bona fide offering of goods or services prior to notice of the present dispute.

The Respondent denies acting in bad faith. It says there is absolutely no evidence that it registered the Disputed Domain Name to target the Complainant and in fact, the evidence is the opposite; namely that the Respondent registered the Disputed Domain Name to use it in accordance with its natural descriptive meaning.

6. Discussion and Findings

According to Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and in connection with Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant if the latter proves in the ADR proceeding that:

(i) The Disputed Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either

(ii) The Disputed Domain Name has been registered by the Respondent without rights or legitimate interest in the name; or

(iii) The Disputed Domain Name has been registered or is being used in bad faith.

In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (i), (ii) and (iii) above). The Panel notes that the Regulation and ADR Rules list the issues under points (ii) and (iii) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the LUXURY MAGAZINE trademark. The Panel agrees with the Respondent that this term is highly descriptive when used in relation to a magazine directed at luxury lifestyles. The Panel notes that the Complainant has not provided any evidence at all directed to the extent of its use of the term “Luxury Magazine” so as to establish whether a secondary meaning associated with the Complainant has developed in those words. The Panel has not been told how the printed version of the Complainant’s magazine is distributed or in what quantities, but imagines it is likely to be distributed to some or all of the Complainant’s cardholders. Without significantly more evidence than has been provided the Panel is unable to reach a conclusion that the Complainant has used the term “luxury magazine” in a manner which has created any sort of secondary meaning in that term. However the subsisting trademark registration is valid unless and until successfully challenged in an appropriate forum and suffices for the purpose of the Regulation and the ADR Rules.

Accordingly the Panel finds that the first condition of Paragraph B11(d)(i) of the ADR Rules has been fulfilled.

B. Rights or Legitimate Interests

Paragraph B11(e) of the ADR Rules provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(1) prior to any notice of the dispute, the Respondent has used the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with the offering of goods or services or has made demonstrable preparation to do so;

(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the Disputed Domain Name, even in the absence of a right recognized or established by national and/or Community law;

(3) the Respondent is making a legitimate and noncommercial or fair use of the Disputed Domain Name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.

The filed evidence clearly establishes that (1) above applies. The Respondent has used the term “Luxury Magazine” in connection with is natural meaning to publish a magazine directed at luxury lifestyles which is called “Luxury Magazine”. It has done so prior to any notice of the present dispute (see chronology above).

Accordingly the Panel finds that the Complainant has failed to establish that Respondent lacks rights or legitimate interests in the Disputed Domain Name and the second condition of Paragraph B11(d)(1) of the ADR Rules has not been fulfilled.

C. Registered or Used in Bad Faith

Although the Panel has determined that the Complainant has not sufficiently met the criteria for the second condition under section Paragraph B11(d)(1) of the ADR Rules, and it is therefore unnecessary for the Complainant to also satisfy the third condition, the Panel will nevertheless render findings on the arguments and evidence presented.

The filed evidence provides no evidence of bad faith registration or use. The Respondent is using the term “luxury magazine” in connection with its normal meaning and there is no evidence it is seeking to target the Complainant in any way. A consequence of adopting as a trademark (and as a domain name) an inherently descriptive term is that (absent convincing evidence of extensive use leading to a secondary meaning attaching to that term) it is likely to be difficult to prevent third parties using the same term in its descriptive sense. The Respondent is using the Disputed Domain Name to publish in Europe a luxury magazine. There is no evidence that in doing so it was in any way targeting the Complainant (apart from anything else the printed version of the Respondent’s magazine is in Italian). This type of usage of ordinary English words does not amount to either registration or use in bad faith.

Accordingly the Panel finds that the Complainant has failed to establish that the Disputed Domain Name has been registered or used in bad faith. Accordingly the third condition of Paragraph B11(d)(1) of the ADR Rules has not been fulfilled.

7. Decision

For the foregoing reasons, the Complaint is denied.

Nick J. Gardner
Sole Panelist
Date: December 28, 2021

¹ Page 5 of the magazine has a footer which says it is the 2018 edition and the Panel accepts this date as accurate