WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc. v. 1&1 Internet, Inc. / Carlos Guevara

Case No. D2012-1424

1. The Parties

Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America (“U.S.”) represented by Sabin Bermant & Gould, LLP, U.S.

Respondent is 1&1 Internet, Inc. of Chesterbrook, Pennsylvania, U.S. and Carlos Guevara of Rahway, New Jersey, U.S.

2. The Domain Name and Registrar

The disputed domain name <gq-magazine.net> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2012. On July 13, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On July 17, 2012, the Registrar transmitted by e-mail 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 e-mail communication to Complainant on July 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 17, 2012.

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 Respondent of the Complaint, and the proceedings commenced on July 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2012. Respondent did not submit any formal response.

The Center appointed Robert A. Badgley, Mark Partridge and Maxim H. Waldbaum as panelists in this matter on September 5, 2012. 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

Complainant is a leading magazine publishing firm. One of Complainant’s most prominent magazines is GQ, launched in 1957 as a men’s lifestyle and fashion periodical. GQ’s monthly circulation in the United States exceeds 900,000. Complainant also operates a website at “www.gq.com”, which site receives more than two million unique visitors per month.

Complainant holds numerous longstanding trademark registrations for the mark GQ.

The Domain Name was originally registered on November 3, 2011. Complainant alleges, and there is no proof to the contrary, that Respondent used the Domain Name to create an e-mail address (david.morgan@gq-magazine.net) and misleadingly used that address to identify himself to vendors as a GQ magazine employee. Complainant alleges that Respondent used this ruse to obtain three cell phone devices from a third-party vendor.

On November 7, 2011, Complainant’s security agent sent Respondent an e-mail advising that Respondent’s actions violated criminal laws and civil trademark laws. Respondent did not answer this e-mail.

As noted above, the Complaint was filed in this proceeding on July 12, 2012. Respondent (the person identified according to the Registrar’s records) sent the Center a series of e-mails apparently claiming that he has no involvement with the facts alleged in the Complaint. In any event, the specific allegations in the Complaint were not rebutted by Respondent, and, as noted, no formal Response was filed.

5. Parties’ Contentions

A. Complainant

Complainant’s main factual allegations are set forth above. Complainant asserts that, based on these facts, it has satisfied all three elements required under the Policy for a transfer of the Domain Name to Complainant.

B. Respondent

Respondent did not formerly or substantially reply to Complainant’s specific contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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

There is no dispute that Complainant holds rights in the mark GQ. The Domain Name incorporates that mark and adds the descriptive word “magazine.” Because GQ is a magazine, the additional word does not, in this Panel’s view, reduce the confusing similarity between the mark and the Domain Name. If anything, the word “magazine” reinforces the likelihood of confusion between the mark and the Domain Name. See Advance Magazine Publishers Inc. v. Lisa Whaley, WIPO Case No. D2001-0248 (finding the domain name <gqkids.com> to be confusingly similar to GQ mark).

Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174, correctly observed:

“A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.”

As noted above, Respondent did not file a formal Response and hence did not effectively rebut any of Complainant’s assertions.

There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.

As noted above, the named Respondent has claimed that this proceeding has been improperly brought against him because he is not the person who committed the acts alleged in the Complaint. The Panel need not decide whether this assertion is true (in which case someone has apparently appropriated Respondent’s identity) or false as it will not affect the ultimate outcome of this matter. Either way, the named Respondent does not claim to have any right or legitimate interest in respect of the Domain Name, and has voiced no objection to the Domain Name being transferred to Complainant.

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:

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

(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith under Policy paragraph 4(b)(iv). The undisputed record in this case indicates that Respondent (or someone appropriating Respondent’s identity) used the Domain Name to create a misleading e-mail address and thereby obtain, under false pretenses, merchandise from an unwitting vendor.

The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location (here, an e-mail address) by creating a likelihood of confusion between Complainant’s mark and the Domain Name.

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.

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 Domain Name <gq-magazine.net> be transferred to Complainant .

Robert A. Badgley
Presiding Panelist

Mark Partridge
Panelist

Maxim H. Waldbaum
Panelist

Dated: September 18, 2012