WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Condé Nast Bridal Group, Inc. v. Trademark
Case No. D2006-0452
1. The Parties
The Complainant is The Condé Nast Bridal Group, Inc., New York, New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
The Respondent is identified as “Trademark”, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <modernbridemagazine.com> is registered to Trademark, through the Dotster Register.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2006. On April 12, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On April 13, 2006, Dotster, Inc. 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 April 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2006.
The Center appointed Christopher J. Pibus, David H. Bernstein and George R. F. Souter as panelists in this matter on June 14, 2006. 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 affiliate of Condé Nast, which is described as one of the world’s most successful magazine publishers. The Complainant publishes magazines such as Modern Bride, Brides, Elegant Bride and TM Your Prom. Modern Bride Magazine has been published for more than 50 years. Audited monthly circulation for Modern Bride exceeded 365,000 regularly in 2005.
The Complainant owns numerous trade-mark registrations for MODERN BRIDE in association with magazines, online publications and distribution of information in the United States of America (including U.S. Federal trade-mark registration No. 529,969 and 2,309,148). These trade-marks were acquired by the Complainant’s predecessors and subsequently assigned to the Complainant. The Complainant also owns registrations for MODERN BRIDE in various countries throughout the world such as China, Japan, Brazil and Argentina. In addition, the Complainant operates a website for Modern Bride magazine located at “www.modernbride.com”.
The Respondent is listed as the registrant for the domain name <modernbridemagazine.com>. The Respondent’s website offers numerous hypertext links to websites that are provided by DomainSponsor.com, which is a website that uses pay per click technology as the primary means of generating revenue.
The Respondent has failed to reply to the Complainant’s demands for the transfer of the domain name, and the Respondent has failed to file any response in the present proceeding.
5. Parties’ Contentions
A. Complainant
The Complainant’s submissions can be summarized as follows:
(a) Identical or Confusingly Similar
The domain name <modernbridemagazine.com> contains the Complainant’s trade-mark, MODERN BRIDE followed by the word “magazine”, and therefore, it is virtually identical and confusingly similar to the Complainant’s trade-mark.
(b) Rights or Legitimate Interest
The Respondent has no rights or legitimate interests in respect of the domain name <modernbridemagazine.com>. The Complainant never granted the Respondent the right to use or register the MODERN BRIDE mark, either in connection with a domain name registration or a bona fide offering of goods and services for any other reason. The Respondent’s repeated failure to reply to the Complainant’s communications indicates that it is unable to demonstrate any legitimate right or interest in the disputed domain name.
(c) Registered and Used in Bad Faith
The Respondent’s domain name was registered and is being used in bad faith based on the following factors: (i) the Respondent registered the domain name for commercial gain and to trade on the Complainant’s goodwill; (ii) Consumers viewing the domain name will expect to be linked to a website associated with Complainant’s magazine because the domain name so clearly identified the Complainant’s trademark and magazine title; (iii) instead consumers will be presented with hypertext links to websites which are not affiliated with the Complainant; (iv) the use of these links will generate volume for Respondent by way of click through fees.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The domain name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has marks;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first issue in this matter is whether the domain name <modernbridemagazine.com> is confusingly similar to the Complainant’s marks. There are two elements that must be satisfied: a) that the Complainant has rights in the particular mark or marks; and b) that the domain name in question is identical or confusingly similar to that mark.
The first element is readily established by reference to the relevant trade-marks register. In this case, evidence of the United States Patent and Trademark Office registration for MODERN BRIDE is sufficient to satisfy the threshold requirement of having rights in the mark. (Imperial College of Science, Technology and Medicine v. Zahid Khan (for Imperial College Management School Alumni Association – ICMSAA), WIPO Case No. D2000-1079).
With respect to confusion, the disputed domain name <modernbridemagazine.com> wholly incorporates the Complainant’s trade-mark, MODERN BRIDE. Numerous panels have held that when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for the purposes of the Policy. (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Dr., WIPO Case No. D2000-1525).
Secondly, the disputed domain name <modernbridemagazine.com> differs from the mark MODERN BRIDE merely by the addition of the descriptive word “magazine”. This addition does not materially change the appearance, sound or meaning of the Complainant’s trade-mark. In fact, the additional word is a description of the exact product that MODERN BRIDE is associated with, and therefore reinforces the connection to Complainant’s trade-mark. (See Lilly ICOS LLC v. Lei Lu Case No. D2005–0436).
In this context, the Panel adopts the reasoning in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, to the effect that “generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).” (See also The Price Company v. Price Club, WIPO Case No. D2000-0664).
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. First of all, there is no relationship between the Complainant and the Respondent giving rise to any license, permission or authorization of use of the disputed domain name. Furthermore, there is no evidence that the Respondent has ever been called by, affiliated with or commonly known by the disputed domain name as an individual or other organization. Because the Respondent failed to respond to the Complaint, the Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No D2003-0455).
Confirmation that the Respondent has no rights or legitimate interests in <modernbridemagazine.com> also appears from the evidence that the Respondent uses the disputed domain name in connection with hyperlinks to third-party sites to misdirect potential visitors from the Complainant’s website. Using identical or confusingly similar marks as a domain name to divert traffic to Respondent’s own portal sites is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the domain name. (Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087).
The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the essential facts in this case correspond to the example of bad faith cited in paragraph 4(b)(iv) of the Policy.
With respect to paragraphs 4(b)(iv), the Respondent uses <modernbridemagazine.com> as a portal site offering links to third party commercial sites. This use of a virtually identical and confusingly similar domain name will inevitably give rise to diversion of Internet traffic from the Complainant’s sites to the Respondent’s site. In this regard, the Panel infers that the Respondent is benefiting from this confusion and diversion by receiving “click-through” commissions in accordance with conventional practices on the Internet when customers reach a site through a link on a portal. (Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231). By registering a modified version of the Complainant’s trade-mark as a domain name, the Respondent intends to take advantage of the Complainant’s goodwill by redirecting traffic from Internet users looking for the Complainant’s site.
The Panel notes that the disputed domain name was only registered as of May 17, 2004, long after the MODERN BRIDE trademark was registered in the United States of America, and long after the mark had become known. The Panel is prepared to infer that the Respondent knew of the Complainant’s trademark rights, and intended to exploit and trade on those rights by choosing its domain name, particularly by adding the word “magazine” as a suffix. Bad faith may be established where “the Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name”. (See Weetabix Limited v Mr J. Clarke, WIPO Case No. D2001-0775).
Accordingly, the Panel finds that the Complainant has met the requirements of paragraphs 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, <modernbridemagazine.com> be transferred to the Complainant.
Christopher J. Pibus | |
David H. Bernstein |
George R. F. Souter |
Dated: June 20, 2006