WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc. v. Pavel Dneprov

Case No. D2011-0771

1. The Parties

The Complainant is Advance Magazine Publishers Inc. of New York, United States of America, represented by Sabin, Bermant & Gould, LLP, United States of America.

The Respondent is Pavel Dneprov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <gqbar.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 4, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On May 4, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also informed the Complainant that the Complaint was administratively deficient. On May 5, 2011, the Complainant filed an amended Complaint.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2011. The Respondent did not submit any response. Accordingly, the Center gave notification of the Respondent’s default on June 6, 2011. Because Respondent has not submitted a Response, the Panel has carefully reviewed the record to ensure that the Center followed the Rules with respect to providing notice. The record reflects that the Center has in fact followed the Rules with respect to giving notice, and in fact that the courier package was signed for by the Respondent, so actual notice appears to have been achieved.

The Center appointed Luca Barbero, David H. Bernstein and Olga Zalomiy as panelists in this matter on June 21, 2011. 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 an American media company which publishes, through its unincorporated division, The Condé Nast Publications (hereinafter “Condé Nast”), the magazines Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ.

GQ magazine was launched in 1957. It is published monthly and includes information about news, politics, entertainment, women, sports, food, travel, cars, technology products, fashion, and style. The United States edition of GQ magazine reaches an average monthly audience of over 900,000, as confirmed by a copy of the Audit Bureau of Circulations report submitted by the Complainant, showing the circulation of the magazine in the United States for the six month period ending December 31, 2010. GQ magazine is published by the Complainant’s subsidiaries or through local licensees in several countries, including Russian Federation, where the Respondent is based.

The Complainant operates the site “www.gq.com”, which features magazine content, photos, designer profiles, lifestyle and cultural information as well as advertisements from third parties. The Complainant’s site receives over 2 million unique users per month.

The Complainant and its wholly owned subsidiaries own over 500 trademark registrations worldwide corresponding to or including the mark GQ, such as United States Trademark No. 2897762, registered on October 26, 2004; United States Trademark No. 3436617, registered on May 27, 2008; European Community Trademark No. 183632, registered on December 2, 1998; European Community Trademark No. 3448164, registered on July 14, 2005; Russian Federation Trademark No. 98775, registered on September 9, 1991; and Russian Federation Trademark No. 307992, registered on June 5, 2006.

In addition, the Complainant is the owner of United States Trademark Registration No. 2695465 for GQ LOUNGE, registered on March 11, 2003, in class 41 and has also secured registrations for GQ BAR in numerous countries, as shown by copies of the trademark certificates attached to the Complaint, including, inter alia, European Community Trademark No. 6292536 for GQ BAR, filed on September 19, 2007, and registered on April 6, 2009, in classes 35, 41 and 43; and the Russian Federation Trademark No. 309472, registered on June 28, 2006.

Furthermore, the Complainant has licensed the trademark GQ BAR for a restaurant and bar service in Moscow since 2007.

The Respondent registered the disputed domain name <gqbar.com> on March 26, 2010. The screenshot of the web site under the disputed domain name submitted by the Complainant shows that it has been redirected to a parking page displaying links to various third party sites, including the Complainant’s GQ magazine site and to the web site dedicated to Esquire magazine, published by one of the Complainant’s competitors.

The Complainant’s attorney sent a letter via email to the Respondent on February 4, 2011, notifying the Respondent of the Complainant’s trademark rights in the marks GQ LOUNGE and GQ BAR, and demanding that the Respondent transfer the disputed domain name to the Complainant. The Respondent replied, on the same day, stating that he could not see any confusion and that the disputed domain name was intended to stand for “Good Quality Bar” and to be used in connection with an alcohol sale shop. In a further communication on February 17, 2011, the Respondent requested USD 5,995 from the Complainant’s attorney in exchange for transferring the disputed domain name to the Complainant, ostensibly to allow the Respondent to purchase a replacement domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <gqbar.com> is confusingly similar to the trademarks in which the Complainant has rights as it reproduces the trademarks GQ and GQ BAR in their entirety.

The Complainant also asserts that, in view of the Complainant’s worldwide reputation and publication of numerous international editions of GQ magazine and GQ web sites, as well as its ownership of GQ BAR registrations and of the operation of the GQ BAR restaurant in Moscow, consumers may be misled on the source or affiliation of the Respondent’s site and assume that the site is operated by the Complainant or the Complainant’s affiliates.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant never granted the Respondent the right to use or register the GQ or GQ BAR marks and the Respondent has not made any valid claim to use the GQ mark other than to say it stands for “good quality”. The Complainant states that the Respondent’s statement lacks credibility in view of the fact that the web site under the disputed domain name lists the Complainant’s “www.gq.com” web site as one of the top search results and the Respondent could not ignore the GQ BAR trademark and reputation since it is located in Moscow, where the Complainant operates a very well-known and reviewed GQ BAR restaurant. Moreover, the Complainant highlights that, as of the date of this UDRP filing, the domain name <goodqualitybar.com>, which incorporates the exact name that Respondent claimed to wish to use, was available for registration.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent registered the disputed domain name for commercial gain and to trade on the Complainant’s goodwill and reputation. The Complainant contends that the Respondent hoped to generate revenue from the use of the GQ and GQ BAR marks and also registered the disputed domain name for the purpose of selling it to the Complainant, as shown by the Respondent’s February 17, 2011 email attached to the Complaint.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. The test for confusing similarity should be a comparison between the mark and the domain name¹. Based on the comparison of trademark GQ BAR and the disputed domain name, the Panel finds them to be confusingly similar because the disputed domain name incorporates the Complainant’s trademark in its entirety and the inclusion of the generic domain suffix “.com” does not dissipate the confusion.

When a domain name wholly incorporates a complainant’s mark, it is sufficient to establish confusing similarity for purposes of the UDRP. The Complainant has provided evidence of ownership of several trademark registrations for GQ BAR, including European Community Trademark No. 6292536 for GQ BAR, filed on September 19, 2007, and registered on April 6, 2009, in classes 35, 41 and 43; and Russian Federation Trademark No. 309472, registered on June 28, 2006. Therefore, the disputed domain name <gqbar.com> incorporates the Complainant’s mark in its entirety.

In comparing the Complainant’s marks to the disputed domain name with reference to <gqbar.com> it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely a functional component of a domain name. See inter alia Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (“the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”); Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 (“the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”).

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark GQ BAR in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the consensus among panels in UDRP cases, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant shall be found to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

The Panel finds that, in the case at hand, the Complainant has satisfied its burden of providing sufficient evidence to show that the Respondent lacks rights to or legitimate interests in the disputed domain name (even after considering the assertions the Respondent made in its correspondence with the Complainant). By not submitting a Response, the Respondent has failed to provide the Panel with any kind of evidence from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name (See along these lines, inter alia, Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465).

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name or that it intends to make a legitimate, non commercial or fair use of the disputed domain name. The Respondent’s email correspondence contains the assertion that he has been in “this business for 14 years”, but does not specify what business he is referring to. The Respondent also states that the disputed domain name is intended to stand for “good quality bar”, but never asserts any past use of the sign Good Quality Bar, let alone GQ Bar, as a trademark or as a domain name. The Panel also verified that the Respondent did not register, e.g., domain names like <goodqualitybar.com>, <goodqualitybar.ru> and <goodqualitybar.org>.

The Panel notes that the disputed domain name was pointing, at the time of filing the Complaint, to a pay-per-click web site featuring links to web sites of GQ and to web sites promoting the Complainant’s competitor’s Esquire magazine. Such links have no connection with the Respondent’s alleged activity in the alcohol sale business. As recognized in many UDRP panel decisions, the use of a domain name for a link farm parking page is generally found to be an unfair use resulting in misleading diversion and does not constitute a legitimate, non commercial use of the disputed domain name under the Policy. See, along these lines, Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 (“it is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests”); and Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.

Along the same lines are the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the domain name to redirect to a directory of commercial web sites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”.

Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory […]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”. See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy”.

As an additional circumstance highlighting the Respondent’s lack of legitimate interests in the disputed domain name, the Panel notes that, in his email dated February 17, 2011, which was attached to the Complaint, the Respondent stated: “WIPO is fine with us. We have a good lawyer and I think a 3 person panel will see our side of it”. Nevertheless, the Respondent failed to appear in the present proceeding, despite receipt of proper notification. Furthermore, when, on May 6, 2011, the Center notified both parties that the disputed domain name registration expired and invited both parties to redeem the disputed domain name, only the Complainant expressed interest and chose to redeem the registration.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registration and Use in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

The Panel finds that the Complainant presented sufficient evidence to conclude that the Respondent registered the disputed domain name in bad faith. According to the registration information published in the Registrar’s database, the Respondent is located in Russian Federation and registered the disputed domain name on March 26, 2010. As mentioned in the preceding paragraphs, the Complainant is the owner of several trademark registrations for GQ BAR, including a Russian Federation trademark registration, dated June 28, 2006, and the Complainant has licensed the trademark GQ BAR to a restaurant and bar service which was opened in Moscow in 2007.

Furthermore, Media reports submitted by the Complainant show that Condé Nast expanded into the restaurant business in view of the popularity reached by its GQ BAR-licensed restaurants, and reports a statement of the Chairman of Condé Nast International stating that the Moscow-based restaurants enhanced the image of their magazines in Russian Federation.

Moreover, the fact that the disputed domain name pointed to a parking page where the Complainant’s trademark was referenced and where a link to the Complainant’s official web site is displayed, is an additional element indicating that the Respondent was aware of the Complainant’s trademark.

In light of the above, the Panel finds that the Respondent was or ought to be aware of the Complainant’s mark at the time of registration.

The Panel also finds that, on the basis of the evidence provided by the Complainant and undisputed by the Respondent, the disputed domain name was also registered by the Respondent for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs, according to paragraph 4(b)(i) of the Policy.

The Respondent, in fact, offered to sell the disputed domain name to the Complainant for USD 5,995, an amount that is certainly over the ordinary costs of registration and maintenance of the disputed domain name (see inter alia Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076, where it was found “the amount sought, $475, far exceeds the domain name registration fee and Respondent did not present any documentation as to any other ‘out-of-pocket costs directly related to the domain name”).

With reference to the use of the disputed domain name, the Panel notes that, at the time of drafting the decision, the redirection of the disputed domain name had been deactivated. However, the Complainant has provided evidence showing that the disputed domain name was pointed, prior to the filing of the Complaint, to a pay-per-click web site with sponsored listings to GQ’s official site and to Esquire Magazine, a competing men’s fashion magazine. The Panel finds that Internet users, in light of the contents of the web page linked to the disputed domain name, may have been misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. Moreover, the Respondent may have profited by earning pay-per-click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).

The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be also applicable in this case since the Respondent has attempted to attract Internet users to a web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site.

As further evidence of the Respondent’s bad faith, the Respondent’s statement that <gqbar.com> would stand for “good quality” is inherently implausible and appears to be a pretext for trading on the Complainant’s mark, because the well-known “GQ BAR” restaurant is located in Moscow, where the Respondent appears to reside.

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all 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 <gqbar.com> be transferred to the Complainant.

Luca Barbero
Presiding Panelist

David H. Bernstein
Panelist

Olga Zalomiy
Panelist

Dated: July 6, 2011

¹ Paragraph 1.2. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).