WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc. v. Perfect Privacy, LLC / Vogue UK / Above.com Domain Privacy / LD Arnott + FMS Smith

Case No. D2016-0341

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 Respondents are Perfect Privacy, LLC of Jacksonville, Florida, United States; Vogue UK of London, United Kingdom of Great Britain and Northern Ireland; Above.com Domain Privacy of Beaumaris, Australia; and LD Arnott + FMS Smith of Victoria, Australia.

2. The Domain Names and Registrars

The disputed domain name <vogueclubuk.com> is registered with Register.com.

The disputed domain name <vogueclub.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2016. On February 22, 2016, the Center transmitted by email to the Registrar, Register.com, a request for registrar verification in connection with the disputed domain name <vogueclubuk.com>. On the same date, the Registrar, Register.com, 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 February 25, 2016, 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 March 1, 2016, in which it proposed to add a second disputed domain name, <vogueclub.com>. On March 2, 2016, the Center transmitted by email to the Registrar, Above.com, Inc., a request for registrar verification in connection with the disputed domain name <vogueclub.com>. On March 4, 2016, the Registrar, Above.com, Inc., 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 March 7, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Complainant filed a second amended Complaint, adding LD Arnott + FMS Smith as Respondents. On March 9, 2016, the Complainant filed a further amendment to the Complaint.

The Center verified that the Complaint together with the amendments to the 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 Respondents of the Complaint, and the proceedings commenced on March 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2016. The Center received an email communication from the Respondent LD Arnott + FMS Smith on March 18, 2016. The Center further received an unsolicited email communication from the Complainant on March 21, 2016. On April 4, 2016, the Center notified the Parties that the extended due date for filing a Response was April 3, 2016 and that the Center will proceed to Panel Appointment according to the Complainant’s election of a three-member Panel pursuant to the Rules, paragraph 6.

The Center appointed Alfred Meijboom, Richard G. Lyon and James A. Barker as panelists in this matter on April 29, 2016. 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 a publisher, which through its unincorporated company Condé Nast Publications Inc. publishes, inter alia, “Vogue”, a major fashion and style magazine for women which was launched in 1892. Vogue reaches an average monthly audience of over 1.2 million in the United States. The British edition of Vogue reaches an average monthly audience of 1.2 million and issues an average of 195,000 copies per month. The Complainant also authorizes the publication of editions in France, Germany, Spain, Brazil, Italy, Greece, Portugal, the Russian Federation, Republic of Korea, Taiwan, Province of China, Japan, Australia, Latin America and China.

Since 2000, the Complainant operates the website “www.vogue.com” with 8.7 million unique visitors per month. The Complainant also operates other websites such as “www.vogue.co.uk” with 2.23 million unique visitors per month and licenses third parties to operate local “vogue” websites in many other countries.

The Complainant states that it owns more than 1,000 trademark registrations worldwide for the mark VOGUE in connection with magazines and online publications and distribution of information. In support thereof, the Complainant provided a list of trademarks and trademark registration certificates for, inter alia, VOGUE in many jurisdictions. These registrations shall be referred to hereafter as the “VOGUE mark”.

The Respondent Vogue UK registered the disputed domain name <vogueclubuk.com> on August 4, 2015.

The Respondent LD Arnott + FMS Smith registered the disputed domain name <vogueclub.com> on September 8, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name <vogueclubuk.com> resolves to a website which offers fashion news, covering models, designers, celebrity fashion, runway shows, and alike, with the website’s logo on the homepage featuring the Complainant’s exact graphic mark. The “about us” section describes the website as “the little sister in the vogue world”. The website further features a section called “designer collections” with a number of images which were first published in the Complainant’s publications. The Complainant alleges that the Respondent Vogue UK is attempting to associate itself with the Complainant’s extensive network of affiliated, regionalized websites and print publications, and is trying to mimic the Complainant’s output, creating a false sense of association. The use of the disputed domain name <vogueclubuk.com> for a website which is focused on fashion and runway photography diminishes the value and reputation of the VOGUE mark, and causes confusion with the VOGUE mark and tarnishes the VOGUE mark’s reputation. The Complainant sent the Respondent Vogue UK a cease and desist letter, demanding, inter alia, that they forfeit the disputed domain name <vogueclubuk.com>, on September 17, 2015. The Respondent Vogue UK never responded.

In its amended Complaints, the Complainant further alleges that it discovered the disputed domain name <vogueclub.com> when it received the registrant and contact information for the disputed domain name <vogueclubuk.com>. According to the Complainant both disputed domain names are under common control of the Respondent Vogue UK, and the Complainant seeks consolidation of the dispute against both domain names and Respondents. On March 21, 2016, the Complainant sent an email to the Center claiming that the case file which was sent to the Respondent Vogue UK to its listed address in London by the Center was in fact delivered at the office of the Complainant in London, which the Complainant considers as an indication that the Respondent Vogue UK is attempting to associate the disputed domain name <vogueclubuk.com> with the Complainant so much so that the Complainant is even receiving this Respondent’s mail.

The Complainant considers the disputed domain names as confusingly similar to the VOGUE mark, as they consist of the Complainant’s identical VOGUE mark and doubtlessly result in consumer confusion.

Further, the Complainant argues that the Respondents have no rights or legitimate interests with respect to the disputed domain names. The Complainant never granted the Respondents the right to register and use the disputed domain names, and the Respondents did not have a legitimate use or right to use the VOGUE mark prior to registration.

Finally, the Complainant claims that this case demonstrates that the Respondents registered the disputed domain names for commercial gain and to trade on the Complainant’s goodwill and reputation. The Respondents make use of fashion photography and news, by connecting “Vogue magazine” and its online brand to their business. Therefore, there is no doubt that the disputed domain names were registered in bad faith.

B. Respondents

The Respondent Vogue UK did not reply to the Complainant’s contentions.

The Respondent LD Arnott + FMS Smith did not formally reply to the Complainant’s contentions but, upon having been notified of the Complaint, sent the Center an email stating

“We have . . . received a written notification . . . regarding your case: (LS) D2016-0341.

In the last fortnight we also received communications to our mailbox [ ]@netspace.net.au regarding the ‘consolidation’ of our domain VOGUECLUB.com with objections aimed at another domain VOGUCLUBUK.com [sic]. We have been perplexed by this association as we do not have, and never have had, a connection of any form with the UK domain or the owner organization you quote.

We have never run a fashion-related website on VOGUECLUB.com, and have never received any earlier correspondence (C & D etc.) from the complainant.

We are individual, Australia-based domain owners and object to being associated with the UK website. The ownership association is not valid, and has never been so.

From your document, we note that the UK site appears to use the ‘contact’ eMail address [ ]@vogueclub.com.

That eMail address is spurious as we have never created a [ ]@vogueclub.com mailbox and the UK group does not have control over the VogueClub.com domain.

Mail to [ ]@vogueclub.com must bounce, as the address has never existed.

We can only speculate that the [ ]@vogueclub.com address was either a deliberate misdirection, or a typo ([ ]@vogueclubuk.com perhaps ?).

Please remove our domain from the received (combined) complaint, and send us the complainant’s objection details specific to our VOGUECLUB.com domain.

Any objection to our domain must be a separate issue, as there has never been an ownership relationship between VOGUECLUB.com and VOGUECLUBUK.com of any form.

Please also adjust your reply submission date of 30 March, to give us a realistic time to formulate our reply to any complainant’s objections that are specific to our domain VOGUECLUB.com.”

6. Preliminary procedural Issue: consolidation of multiple domain names and respondents

Originally the Complainant brought a Complaint against the disputed domain name <vogueclubuk.com> only. After the Complainant received the registrar verification from the Center, it amended its Complaint twice by adding the domain name <vogueclub.com>, arguing that it discovered that it appears that the Respondent Vogue UK has also registered the disputed domain name <vogueclub.com>, as the registrant and contact information for the disputed domain name <vogueclubuk.com> listed the email address “[ ]@vogueclub.com” as the Respondent Vogue UK’s contact email address. The Complainant asked to consolidate the disputed domain names and their respective registrants in its email accompanying its second amended Complaint to the Center.

Paragraph 4.16 of WIPO Panel View on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), explains the principles that govern the question of whether a complainant may bring a complaint against multiple respondents. According to these principles the majority view of panels is to accept consolidation of multiple respondents and domain names if (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.

In this matter, the Complainant has not substantiated its claim that both disputed domain names are controlled by the Respondent Vogue UK other than by referring to the disputed domain name <vogueclubuk.com> registrant’s email address being an email address under the disputed domain name <vogueclub.com>. This is, however, expressly refuted by the Respondent LD Arnott + FMS Smith in its email to the Center, as quoted in section 5.B above. In absence of any other relevant evidence regarding an alleged common control of the disputed domain names, the Panel finds that the Complainant failed to meet the first principle mentioned above and does not allow the disputed domain names and Respondents to be consolidated.

The Panel finds the addition of the disputed domain name <vogueclub.com> to the Complaint inadmissible and shall disregard the Complainant’s request in connection with this disputed domain name. This is of course without prejudice to the Complainant’s ability to file a separate complaint with regards to the disputed domain name <vogueclub.com>.

7. Discussion and Findings

The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of WIPO Overview 2.0, the consensus view of UDRP panels is that the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

(i) the disputed domain name <vogueclubuk.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name <vogueclubuk.com>; and

(iii) the disputed domain name <vogueclubuk.com> has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well established that the generic Top-Level Domains (“gTLDs”), such as “.com”, may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the disputed domain name <vogueclubuk.com> is confusingly similar to the VOGUE mark. The Respondent has taken the VOGUE mark in its entirety and merely added the descriptive words “club” and “uk”, the latter commonly understood as the abbreviation of the United Kingdom of Great Britain and Northern Ireland. The added words are insufficient to differentiate the disputed domain name <vogueclubuk.com> and the VOGUE mark.

Consequently, the first element of paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel takes note of the Complainant’s allegation that no authorization has been given by the Complainant to the Respondent Vogue UK to use or register the disputed domain name <vogueclubuk.com>, the Respondent has no prior rights or legitimate interests in the disputed domain name, and the disputed domain name <vogueclubuk.com> resolves to a website which is similar to the Complaint’s magazine and websites under the VOGUE mark.

The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name <vogueclubuk.com>.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name <vogueclubuk.com> in bad faith where the Respondent Vogue UK has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.

In the Panel’s view, it is obvious that at the time the Respondent Vogue UK registered the disputed domain name <vogueclubuk.com> it must have had the VOGUE mark in mind as the VOGUE mark was already well known worldwide and directly connected to the Complainant’s fashion magazines at that time (e.g., Advance Magazine Publishers Inc. v. Puia Shamsossadati, Golden Concept AB, WIPO Case No. D2015-1738). The Panel is therefore satisfied that the Respondent registered the disputed domain name <vogueclubuk.com> in bad faith.

The disputed domain name <vogueclubuk.com> resolves to a website that, as such, does not contain advertisements or links to commercial third party websites. Nevertheless, the Panel is of the opinion that the Respondent Vogue UK’s website is for commercial gain, as it explicitly gives attention and publicity to various commercial players in the fashion world, such as designers, fashion brands and models, without being discernible as a noncommercial fan site. Although it may not be clear that the commercial benefits accrue to the Respondent Vogue UK, it is sufficient for a finding of paragraph 4(b)(iv) of the Policy that the Respondent had the intention to attract Internet users to the website to which the disputed domain name resolves if there may be some commercial benefit and even if it is not clear to whom the commercial gain will accrue (LEGO Juris A/S v. Project Xenos, Ty Weir, WIPO Case No. D2011-1281). Moreover, the fact that the Respondent’s listed contact information for the disputed domain name <vogueclubuk.com> proved false, and it did neither reply to the Complainant’s cease and desist letter nor file a Response are also clear indications of the Respondent Vogue UK’s use of the disputed domain name <vogueclubuk.com> in bad faith. The Panel is therefore satisfied that the use which the Respondent Vogue UK makes of the disputed domain name <vogueclubuk.com> to attract Internet users for the Respondent’s commercial gain constitutes use of the disputed domain name <vogueclubuk.com> in bad faith.

Consequently, the third and last element of paragraph 4(a) of the Policy is also met.

8. Decision

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 name <vogueclubuk.com> be transferred to the Complainant.

Alfred Meijboom
Presiding Panelist

Richard G. Lyon
Panelist

James A. Barker
Panelist
Date: May 6, 2016