LeitsätzlichesDie Domain Voguebritian.com und andere werden dem Verlag zugesprochen, der die within bekannte Zeitschrift "Vogue" herausgibt.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-0907
Entscheidung vom 19. Dezember 2002
1. The Parties
The Complainant is Advance Magazine Publishers, ... United States of America.
The Respondent is Models USA ..., ... United States of America.
2. The Domain Name(s) and Registrar(s)
The disputed domain name(s)
are registered with Stargate Communications
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on October 1, 2002. On October 2, 2002, the Center transmitted by email to Stargate Communications a request for registrar verification in connection with the domain name(s) at issue. On October 3, 2002, Stargate Communications
transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 October 11, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2002. The Respondent did not submit any Rresponse. Accordingly, the Center notified the Respondentâ€™s default on November 4, 2002.
The Center appointed Mark Partridge, David H. Bernstein and Dana Haviland as panelists in this matter on December 5, 2002. 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 following facts are not contested.
Complainant Advance Magazine Publishers Inc., ("AMPI"), is one of the worldâ€™s most successful magazine publishers. Through its unincorporated division, The Condé Nast Publications Inc. (hereinafter Condé Nast), Complainant publishes such well-known magazines as Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ.
Launched in 1892 Vogue is a well-known fashion and style magazine for women.
The U.S. edition of Vogue reaches an average monthly audience of over 1,163,000 in the U.S. and Canada. In addition to the U.S. edition, Vogue is published through Complainantâ€™s subsidiaries or through local licensees in the following countries: England, France, Germany, Spain, Brazil, Italy, Greece, Russia, Korea, Taiwan, Japan and Australia.
Complainant owns numerous trademark registrations for VOGUE in connection with magazines worldwide, including registrations in the United Kingdom, Canada, France and Germany.
Since 1916 Complainantâ€™s U.K. subsidiary, The Conde Nast Publications Ltd. has published British Vogue magazine, which reaches almost 200,000 U.K. adults every month. Since 1921, Complainantâ€™s French subsidiary, Les Publications Conde Nast S.A., has published the French edition of Vogue, namely Vogue Paris. Since 1979, Complainantâ€™s German subsidiary, Conde Nast Verlag GmbH has published Deutsch Vogue magazine, which reaches over 97,000 German readers every month.
As a result of its longstanding use, the name and mark VOGUE have become famous and are associated with Complainant.
Respondent registered the disputed domain names on July 20, 2002. On August 9, 2002, counsel for Complainant sent the letter to Respondent via certified mail return receipt requested, explaining Complainantâ€™s rights and requesting that the disputed domain names be transferred to Complainant. This letter was returned to Complainantâ€™s counsel, stamped "Return to Sender Insufficient Address". On August 21, 2002, Complainantâ€™s counsel sent the e-mail attached as Annex J to the e-mail address provided by Respondent to the domain registrar. After receiving no reply to his August 21, 2002, e-mail, counsel for Complainant sent another email attached to Rrespondent. As of the date of filing the complaint, Complainant had not received any reply from Respondent.
5. Partiesâ€™ Contentions
Complainant alleges that the Domain Names are confusingly similar to the Vogue mark; that Respondent has no legitimate rights and interests in the Domain Names; and that the Domain Names were registered and used in bad faith.
The Respondent did not reply to the Complainantâ€™s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Respondent's domain names are comprised of Complainant's mark followed by the country names Britain, Canada, England, Germany and France. The addition of the country name does not avoid confusion, especially here where Complainant has well-established trademark rights in those. Thus, persons encountering Respondent's domain names are likely to believe incorrectly that the domain names refer to Complainant's magazine in the particular country designated.
Confusing similarity has been found by other Panels in similar circumstances. See, e.g., Advance Magazine Publishers Inc. v. Marcellod Russo, WIPO Case No. D2001-1049 (WIPO November 22, 2001) (finding the domain name <vogueaustralia.com> confusingly similar to Complainantâ€™s VOGUE mark); Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050 (finding <yahooflorida.com> and <yahoousa.com> confusingly similar to YAHOO! mark).
We find that that Complainant has satisfied the requirements of Paragraph 4(c)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the domain names. The domain names do not appear to be in use for any bona fide use and there is no indication that Respondent was known by the name Vogue prior to registration of the domain names. Respondent is not authorized or licensed to use Complainant's famous mark. There is nothing in the record to rebut that showing. Therefore, we find that Complainant has satisfied the requirement of Paragraph 4(c)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states: "For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith." The Policy then goes on to list sets of circumstances.
As specifically noted in the Policy, however, the circumstances of bad faith are not limited to those listed.
In this case, several factors support a finding a of bad faith registration and use, despite the fact that there has been no active use of the domain names. It appears Respondent may have provided false contact information. Second, Respondent's name, Models USA Inc., places the Respondent in the fashion industry where the VOGUE mark is famous and widely known. Finally, Respondent has engaged in a pattern of registering multiple marks that prevent Respondent Complainant from having corresponding domain names that reflect principal locations of its business.
This is not a case of mere passive holding per se, but a case where the combination of factors make it more likely than not that the Respondent is a cybersquatter who has registered and used the domain names in bad faith. By its default, Respondent has failed to rebut the reasonable inferences that can be drawn from the combination of circumstances. The Rules permit the Panel to draw reasonable inferences against the defaulting party. The Policy should not be interpreted in a manner that shields defaulting parties who passively hold domain names corresponding to the famous marks of others. Here, it is reasonable to infer from the combination of factors that Respondent has registered and used the domain names in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <voguebritain.com>, <voguecanada.com>, <vogueengland.com>, <voguefrance.com> and <voguegermany.com> be transferred to the Complainant.
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