WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Registration Private, Domains By Proxy, LLC / W Magazine
Case No. D2016-0955
1. The Parties
The Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America (“United States”), represented by Sabin Bermant & Gould, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / W Magazine of Greenwich, Connecticut, United States.
2. The Domain Name and Registrar
The disputed domain name <wfashionmagazine.com> (the “Domain Name”) 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 May 12, 2016. On May 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 23, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 27, 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 May 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2016.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on July 18, 2016. 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 Complainant publishes a fashion magazine and operates a website to promote the magazine online. The Complainant provided evidence of multiple trademark registrations for the mark W and design including, inter alia, United States Trademark No. 3982709 (registered on June 21, 2011) for downloadable magazines in the field of women’s fashion and lifestyle. The date of the Domain Name registration was confirmed by the Registrar to be April 25, 2016.
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with a “404” error message, and the website currently appears to be inactive.1
5. Parties’ Contentions
The Complainant alleges it is one of the world’s most successful magazine publishers. Through its unincorporated division, Condé Nast, the Complainant publishes such well-known magazines as Vogue, Glamour, The New Yorker, Self, Vanity Fair and W. Condé Nast’s magazines have a strong Internet presence and the company operates websites that incorporate content from its magazines. Published since 1971, W is one of the world’s foremost fashion magazines, with an average monthly audience of over 450,000.
The Complainant also alleges that, in addition to its print magazine, it uses the domain names <wmagazine.com> and <wmag.com> to link to its website for W magazine, and the website receives over 1,200,000 unique users per month and over nine million monthly page views.
The Complainant alleges that the Respondent used the Domain Name to create an email address “[…]@wfashionmagazine.com” in an effort to identify himself as “Casting Director” in charge of W photo shoots. The Domain Name and email address were used to communicate with models using the “Model Mayhem” website in order to lure the models into a scam involving money laundering under the auspices of a W magazine photo shoot. The Complainant sent the Respondent an email complaining of the fraudulent and infringing actions, to which the Respondent did not reply.
To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark W and design, in respect of a downloadable fashion magazine. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive phrase “fashion magazine” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent, having registered the Domain Name using a privacy service, used the Domain Name to attempt to defraud individuals and to trade on the Complainant’s goodwill and reputation. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Since the Respondent did not respond to the Complaint, the facts regarding the use and fame of the Complainant’s mark, as well as other statements regarding correspondence between the Parties, including the non-response from the Respondent to the Complainant’s cease-and-desist letter, are taken from the Complaint and are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for and well-established reputation in the W trademark in relation to a fashion magazine and that, even though not a requirement under the first element of the Policy, these rights precede the date of registration of obtaining the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the descriptive terms “fashion magazine” to the Domain Name does not change the overall impression of the designation as being connected to the Complainant’s mark and underscores an attempted connection by the Respondent in the Domain Name to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark — and if anything, enhances it. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating, “The incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark”.
See also paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). “The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its mark.
Further, the evidence on record shows that the Respondent appears to have sought payment from models by claiming to be associated with a fashion photo shoot to be held on behalf of the Complainant. The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant’s mark when it registered the Domain Name. The Panel finds that the Respondent’s use of the Domain Name does not give rise to any rights or legitimate interests in the Domain Name under the Policy.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
Given the evidence in support of the Complainant’s widespread reputation, the Panel agrees with the Complainant’s claims and finds that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark and that the continued holding of the Domain Name is in bad faith. This is consistent with the holding in Pfizer Inc. v. Legal Dept, Barry McMahon and Pfizer ltd, Sys Admin, WIPO Case No. D2013-2046.
In addition, it has been held in previous UDRP decisions that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177.
Even where the Domain Name resolves to an “error” page, the Panel does not believe that it changes the finding. As stated in paragraph 3.2 of the WIPO Overview 2.0, regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. […] Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed […]. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).” See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the panel must give close attention to all the circumstances of the respondent’s behaviour. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Other UDRP panels have held that passive holding can be sufficient to constitute bad faith. See Redcats S.A. and La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859 and Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613.
Furthermore, the Respondent has taken active steps to conceal its identity by registering the Domain Name using a privacy service, which when considered with the circumstances of this case is further evidence of bad faith by the Respondent. See, e.g., Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.
Although the above would suffice, the Panel finds compelling factual and circumstantial evidence in the record that the Respondent is a further bad actor, and that its conduct of engaging in what appears to be an email phishing scheme clearly demonstrates registration and use in bad faith.
Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name, the proxy registration, and the deceptive emails sent by the Respondent raised in complaints of fraud by users, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <wfashionmagazine.com>, be transferred to the Complainant.
Ellen B Shankman
Date: August 1, 2016
1 A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website at the disputed domain name. See WIPO Overview 2.0, paragraph 4.5.