WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc. and Conde Nast New Markets Europe / Africa Inc. v. Mohsen Ramzani, Voguepersian

Case No. DIR2020-0002

1. The Parties

The Complainants are Advance Magazine Publishers Inc. (“First Complainant”) and Conde Nast New Markets Europe / Africa Inc. (“Second Complainant”), both of United States of America (“United States”), represented by Deriş Attorneys at Law Partnership, Turkey.

The Respondent is Mohsen Ramzani, Voguepersian, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <voguefa.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2020. On April 22, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On April 25, 2020, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Pursuant to the Center’s notification regarding annexes to the Complaint, the Complainants resubmitted annexes to the Complaint on May 15 and 18, 2020 respectively.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2020. On June 9, 2020, the Center received an email from a person claiming to be a translator writing on the Respondent’s behalf. On July 4, 2020, the Center received an email from the Respondent.

The Center appointed Andrew F. Christie as the sole panelist in this matter on June 29, 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 First Complainant is a New York-based publishing company which produces many of the world’s best-known magazine titles including “Vogue”, “House & Garden”, “Tatler” and “Vanity Fair”. The Second Complainant is the international arm of the First Complainant. With headquarters located in London, the Second Complainant publishes over 120 magazines outside the United States, as well as 80 websites and numerous tablet and smartphone apps, in 24 markets across six continents.

“Vogue” is a monthly fashion and lifestyle magazine based in New York City, which was first published in 1892. Currently there are 23 international editions of “Vogue”, including editions in the United Kingdom, Australia, Brazil and China. The Complainants’ magazines have an Internet presence and they operate, with affiliates, several popular websites that incorporate content from many of those magazines. The global printed “Vogue” magazine reaches an average monthly audience of 24.6 million and 94 million unique digital users.

The Complainants are the owners of many trademark registrations for the word trademark VOGUE. For example, the First Complainant is the owner of United States Trademark Registration No. 0103770 (registered on April 13, 1915) and Iran Trademark Registration No. 39244 (registered on September 19, 1973); and the Second Complainant is the owner of Turkey Trademark Registration No. 2006 07931 (registered on March 2, 2006).

Since 2000, the Complainants have operated websites using various domain names containing the VOGUE trademark, including <vogue.com>. The website at “www.vogue.com” obtains over 24.6 million page-views and 94.1 million unique users every month.

The disputed domain name was registered on January 7, 2020. The Complainants have provided an undated screenshot said to be of the website resolving from the disputed domain name, on which appears a representation of a magazine cover headed with the Complainants’ VOGUE trademark.

The Second Complainant sent a cease and desist letter, dated March 24, 2020, to the Respondent via email requesting the immediate cessation of allegedly infringing activities. The Respondent did not respond to the Complainant’s letter and did not cease the activities complained about.

Currently the disputed domain name does not appear to resolve to an active website.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights because: (i) the Respondent has registered the disputed domain name consisting of the Complainants’ trademark VOGUE with the addition of “fa”, which is an abbreviation of “fashion” that will lead to consumer confusion given the content of Vogue magazines; and (ii) consumers who view the disputed domain name, and any associated website, will instantly assume that it is affiliated with, sponsored, supported or endorsed by the Complainants.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainants never granted the Respondent the right to use or register the VOGUE trademark, either in connection with a domain name registration or a bona fide offering of goods and services, or for any other reason; (ii) any potential claim by the Respondent that “vogue” means “fashion” will be contrary to developed trademark laws, particularly in view of the fact that the Complainants’ trademark is globally well known; and (iii) the Complainants have been using their VOGUE trademark on products and services worldwide continuously since 1892, and have extensive goodwill and reputation in it.

The Complainants contend that the disputed domain name was registered and is being used in bad faith because: (i) combining the well-known VOGUE trademark with the “fa” abbreviation of “fashion” is a mere indication of bad faith; (ii) the website resolving from the disputed domain name contains an image that is a counterfeit of the Complainant’s Vogue magazine cover, using an identical version of its VOGUE trademark and logo; (iii) the use and content of the disputed domain name shows the clear bad faith intention of the Respondent, who clearly aims to imitate the Complainants’ well-known trademark and products to gain unfair advantages; (iv) the Respondent’s intention was and is to derive commercial benefit on the back of the Complainants’ goodwill in respect of the VOGUE trademark, from confusion resulting from the use of the disputed domain name in relation to the purported magazine business of the Respondent; and (v) the Respondent clearly makes unauthorized use of the VOGUE trademark to achieve its goal of introducing and promoting the purported “Vogue Persian” magazine to the fashion community in Islamic Republic of Iran.

B. Respondent

On June 9, 2020, the Center received an email from a person claiming to be a translator writing on the Respondent’s behalf, who is stated to reside in Turkey. The substance of the email is an expression of the Respondent’s desire to create a venture with the Complainants to promote their business in Islamic Republic of Iran.

On July 4, 2020, the Center received an email from the Respondent stating: “hi dear The website is currently disabled to determine if the company will cooperate with us”.

6. Discussion and Findings

A. Consolidation – Multiple Complainants

The Complaint was filed by two Complainants. The Second Complainant is the international arm of the First Complainant. Both Complainants own trademark registrations for VOGUE, in different jurisdictions. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

B. Identical or Confusingly Similar

The part of the disputed domain name that precedes the country-code Top-Level Domain (“ccTLD”) “.ir” is the whole of the Complainant’s registered word trademark VOGUE, followed by the letters “fa”. It appears to the Panel that there are a number of ways in which an Internet user would interpret the letters “fa” in the disputed domain name. One possibility is to read them as an abbreviation of the word “fashion”. Another possibility is to read them in conjunction with the ccTLD of the disputed domain name, to make the word “fair”. Yet another possibility is to give them no particular meaning. Whatever is the way in which any particular Internet user would read the disputed domain name, the Complainant’s word trademark VOGUE is clearly recognizable within the disputed domain name. The addition of the letters “fa”, however they may be read, does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s word trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its VOGUE trademark. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website that promotes a purported Persian version of “Vogue” magazine, using the Complainant’s VOGUE word trademark and logo. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered or Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its VOGUE trademark. The evidence on the record provided by the Complainant with respect to the use of its VOGUE trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <voguefa.ir> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: July 13, 2020