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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bauer Media France v. Jinsoo Yoon

Case No. D2019-3210

1. The Parties

The Complainant is Bauer Media France, France, represented by Cabinet Desbarres & Staeffen, France.

The Respondent is Jinsoo Yoon, Republic of Korea.

2. The Domain Nam and Registrar

The disputed domain name <maximag.com> (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name on January 3, 2020, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2020, 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 January 10, 2020.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2020.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 14, 2020. 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.

On February 15, 2020, the Respondent sent an informal email communication to the Center regarding the language of the proceedings.

4. Factual Background

The Complainant is a company incorporated under the laws of France since 1985. The Complainant belongs to the Bauer Media Group, an international media group which publishes more than 600 magazines.

The Complainant is specialized in the publishing of magazines and periodicals in France. The Complainant publishes the weekly French women’s magazine “Maxi”, which has been dealing with various matters, such as home decoration, cooking, tourism, fashion, beauty, health and astrology, since its creation in 1986.

The Complainant is the owner of the French trademark registration MAXI No. 93467547 registered on May 7, 1993.

In addition the Complainant is the owner of the domain name <maxi-mag.fr> which was registered on October 12, 2007.

The Respondent registered the Disputed Domain Name <maximag.com> on May 18, 2004.

The Disputed Domain Name resolves to a parking website with pay-per-click (“PPC”) links. In addition, the Disputed Domain Name is on sale for a minimum USD 4,950.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant states that the Disputed Domain Name <maximag.com> is confusingly similar to the Complainant’s MAXI trademark, since the Complainant’s trademark is entirely reproduced in the Disputed Domain Name in combination with the descriptive sequence “mag”, which is nothing more than the diminutive of the word “magazine”.

In addition, the Top-Level Domain suffix “.com” does not affect the determination that the Disputed Domain Name is identical to the Complainant’s trademark.

Rights or legitimate interests

The Complainant contends that the Respondent does not have rights or legitimate interests in the Disputed Domain Name, for the following reasons:

- The Complainant has not granted any authorization to anyone to register domain names containing the Complainant’s trademark.

- There is no evidence that the Respondent is commonly known by the Disputed Domain Name.

- The Respondent is not using or preparing to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Indeed, the Disputed Domain Name is currently on sale. Moreover, the Disputed Domain Name redirects to a parking page, which contains various headings, related to magazines and contested games.

Thus, it is clearly demonstrated that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Registration and use in bad faith

The Complainant states that the Disputed Domain Name has been registered through a privacy protection service that masked the identity of the Respondent.

In addition, after obtaining the Respondent identity, the Complainant found out that the Respondent has been involved in several URDP cases involving the registration of domain names identical or confusingly similar to registered trademarks.

The Complainant further states that the Disputed Domain Name not only comprises the Complainant’s trademark but it is also highly similar to the Complainant’s domain names, such as <maxi-mag.com> and <maximagazine.com>, which exist since 2000.

Furthermore, the Respondent uses the Disputed Domain Name in connection with a website displaying links to services in the magazine industries and contests games.

Moreover, the website operated under the Disputed Domain Name direct Internet users to magazine subscriptions links.

Thus, the Disputed Domain Name has been used with the view of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

Finally, the Complainant argues that the Respondent must have been aware of the Complainant’s earlier trademark when he registered the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainant contentions. However, the Respondent sent an email stating that at the moment he was living in Korea and that his English wasn’t fluent. So he requested the complaint to be in Korean.

6. Discussion and Findings

6.1. Preliminary Issue: Language of proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding.

The Respondent requested the Complaint to be in Korean in an email written in English, 13 days after the Response due date.

The Registration Agreement for the Disputed Domain Name is in English.

The Panel has carefully considered all elements of this case, in particular, the Respondent request that the language of proceeding be Korean; the fact that the Respondent wrote an email in English and the fact that the Respondent was previously involved in several UDRP cases, where the language of the decisions were all in English and that the Registration Agreement is in English. In view of all these elements, the Panel rules that the language of the proceeding and the decision shall be both in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:

(i) the Disputed Domain Name is identical or confusingly similar to a 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 Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark MAXI. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element. Furthermore, the Disputed Domain Name contains the Complainant’s MAXI trademark in its entirety; the addition of the term “mag” does not prevent a finding of confusing similarity.

Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, 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 (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 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 at issue.”

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MAXI trademark.

The Respondent has failed to show that it has acquired any rights or legitimate interests with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered in 2004, 11 years after the Complainant obtained its MAXI French Trademark registration No. 9346547. The fact that the Respondent reproduces the Complainant’s MAXI trademark in the Disputed Domain Name with the term “mag”, a term used to denote the Complainant’s product, clearly demonstrates that the Respondent was aware of the Complainant’s MAXI trademark when registering the Disputed Domain Name.

Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its MAXI trademark.

The circumstances in the case before this Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and it has intentionally created a likelihood of confusion with the Complainant’s MAXI trademark in order to attract Internet users for its own commercial gain.

Moreover, the fact that the Respondent was previously involved in several UDRP cases is further indication of the Respondent’s bad faith.

In addition, the Complainant has also produced evidence that the Disputed Domain Name is offered for sale at the amount of USD 4,950. Accordingly, the Panel finds that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, who is the owner of the trademark MAXI, or to a competitor of the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the Disputed Domain Name, according the paragraph 4(b)(i) of the Policy.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.

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 Disputed Domain Name <maximag.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: February 28, 2020

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