The Complainant is Conde Nast New Markets Europe / Africa Inc. of London, United Kingdom of Great Britain and Northern Ireland, represented by Deris Attorney-at-Law Partnership, Turkey.
The Respondent is Registration Private, DomainsByProxy.com, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Murat Gocen of Kyrenia, Cyprus.
The disputed domain names <kibrisvogue.com> and <kibrisvoguemagazin.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2013. On November 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <kibrisvogue.com>. On November 22, 2013, the Registrar 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 November 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2013, in which the disputed domain name <kibrisvoguemagazin.com> was added. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <kibrisvoguemagazin.com>. On December 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details disputed domain name <kibrisvoguemagazin.com>.
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 amended Complaint, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 8, 2014. 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.
The Complainant Conde Nast New Markets Europe / Africa Inc. (hereinafter “Conde Nast”), is the international arm of the New-York based publishing company Advance Magazine Publishers Inc. The Complainant, its parents and subsidiaries produce well-known magazine brands, including Vogue, Glamour, Gentleman's Quarterly, Architectural Digest, Wired, House & Garden, Condé Nast Traveller, Tatler and Vanity Fair.
Conde Nast’s magazines have an Internet presence and the company operates, with its affiliates, several popular web sites that incorporate content from many of its magazines. Vogue is a fashion and style magazine for women. The Conde Nast Group had established international editions of the Vogue magazine in several jurisdictions including France, Australia, Italy, Brazil, Spain and Japan.
The disputed domain name <kibrisvogue.com> was registered on October 1, 2011, and the disputed domain name <kibrisvoguemagazin.com> was registered on November 12, 2011.
The Complainant contends that it has established legal rights, including a worldwide reputation, in the word “Vogue” on the basis of its ownership of numerous registered trademarks incorporating that word and the publication of numerous international editions of Vogue Magazine. In support of this contention it cites several UDRP decisions.
The Complainant further contends that the disputed domain names are confusingly similar to the VOGUE mark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. In particular, it states that the Respondent has no legitimate right to use the VOGUE mark.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith.
The Complainant states that the disputed domain name <kibrisvogue.com> combining the well-known VOGUE trademark with a generic geographical indication such as “Kibris”, which is the Turkish word for Cyprus, as well as the disputed domain name <kibrisvoguemagazin.com> also comprising the name of the goods “magazin” on which the trademark is being used, is an indication of bad faith.
According to the Complaint, the Respondent should be well aware that the Complainant is marketing its print edition as well as online edition of “Vogue” magazine worldwide and combines the VOGUE trademark either with the name of the country or the city and also the word “magazine”. Such as British Vogue was launched in 1916, the launch of “Vogue Paris” was in 1920, “Vogue Australia” was launched in Australia in 1959, followed by “Italian Vogue” in 1965.
The Complainant states that although the disputed domain name <kibrisvogue.com> is currently not active, it was actively used beginning in 2011 and supposedly used actively until the beginning of 2013. The Complainant attached to the Complaint several prints of the inactive or parking site as well as screenshots from records from the “www.archive.org” website, which clearly evidence that the disputed domain name was used on a website for a weekly published magazine.
The Complainant states that the Respondent was using the disputed domain name <kibrisvogue.com> actively for the Respondent’s online publication of “Vogueplus Magazine”, which provides fashion, society news and other information targeting women, similar to information covered by the Complainant’s magazine. According to the Complaint, these facts clearly evidence that the Respondent was fully aware of the reputation of Vogue magazine and the value of the Vogue trademark when the Respondent registered the disputed domain names. They also clearly evidence that the Respondent used the disputed domain names to promote his printed Vogue magazine and profit from Vogue’s reputation. The content of the website at “www.kibrisvogue.com” contained references to fashion, high set society events, beauty tips as well as a header indicating “Kibris Vogue Plus – Kibris Magazine”. At the end of the page it is indicated that the website is “powered by Kıbrıs Vogue Plus” and designed by the Respondent Murat Göçen.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The disputed domain names are <kibrisvogue.com> and <kibrisvoguemagazin.com>.
The Complainant has provided evidence that it is the legitimate holder of the VOGUE trademark.
The disputed domain names are confusingly similar to the Complainant’s trademark.
The addition of generic terms like “kibris” or “magazin” to a well-known trademark in the disputed domain names does not eliminate confusion. Since the trademark VOGUE is well-known and it is incorporated in its entirety in the disputed domain names, and considering that the disputed domain names are a combination of the identical prefix Vogue and the generic terms “magazine” and “kibris” (“kibris” being the Turkish word for Cyprus), Internet users are likely to be misled or confused as to the Complainant’s relationship to, affiliation with, or endorsement of, the websites at the disputed domain names.
Therefore, the Panel decides that the disputed domain names are confusingly similar with the Complainant’s trademark VOGUE.
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the disputed domain names or a name corresponding to the domain names 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 names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent has never been licensed or authorized by the Complainant to use the VOGUE trademark or the disputed domain names. The Complainant states that the Respondent is making a non-authorized use of the disputed domain names. The Respondent has not denied these assertions.
Further, it is not possible to conclude that the Respondent’s use of the disputed domain names is in connection with a bona fide offering of goods or services. The Complainant clearly stated that it became aware of the Respondent due to their infringing publication of “Kıbrıs VOGUE Plus Magazine” within Cyprus in the year 2011. According to the Complaint, after a cease and desist letter to the author and publisher, the Respondent ceased the publication of the printed “Kıbrıs VOGUE Plus Magazine” in Cyprus. However, the Respondent then re-launched the “Kıbrıs VOGUE Plus Magazine” in Cyprus and also is using the domain name registration for <kibrisvogue.com>.
The Respondent has failed to come forth with any demonstration of rights or legitimate interests in the disputed domain names.
The Panel accordingly determines that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel is satisfied that the disputed domain names have been both registered and used in bad faith by the Respondent.
The finding in relation to the Respondent’s lack of any right or legitimate interest informs the Panel’s view on bad faith. The Panel infers that the Respondent’s motivation for registering the disputed domain names was so as to take advantage of the Complainant’s rights and reputation in the VOGUE trademark.
The Complainant has presented the Panel non-contradicted evidence that the Respondent is using the disputed domain names to offer products similar to those offered by the Complainant under its VOGUE trademark.
The Complainant has provided screenshots of “Archive.org” where it can be seen that the disputed domain name <kibrisvogue.com> was used on a website for a weekly published magazine. The Respondent has not denied these assertions. The Panel also visited “www.kibrisvoguemagazin.com” and was able to verify that the content makes also reference to the same magazine available in the archives of “Archive.org”.
The Panel concludes that, by using the disputed domain name in this manner, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating the likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its websites or of a product or service on its websites. This is sufficient evidence for the Panel to base a finding of bad faith registration and use per paragraph 4(b)(iv) of the Policy.
Thus, the Panel finds that the Complainant has sustained its burden of proof in showing that the disputed domain names were registered and are being used in bad faith.
For these reasons, the Panel finds that the Respondent both registered and used the disputed domain names in bad faith contrary to paragraph 4(b)(iv) 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 disputed domain names <kibrisvogue.com> and <kibrisvoguemagazin.com> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: January 22, 2014