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The Conde Nast Publications Limited v. Alison Coplen t/a Superior Interiors [2004] GENDND 1324 (25 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Conde Nast Publications Limited v. Alison Coplen t/a Superior Interiors

Case No. D2004-0761

1. The Parties

The Complainant is The Conde Nast Publications Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by W. H. Beck, Greener & Co., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Alison Coplen t/a Superior Interiors, Santa Ponca, Spain.

2. The Domain Name and Registrar

The disputed domain name <theworldofinteriors.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2004.

On September 21, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue.

On the same date, 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 for the administrative and technical contact.

On September 23, 2004, 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”).

On September 23, 2004, 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 September 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2004.

On October 2, 2004, following an exchange of communications between the Center and the Respondent, a Response was filed with the Center by e-mail and the hard copy was received on October 6, 2004.

On October 11, 2004, the Center appointed James Bridgeman as the sole panelist in this matter. 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.

4. Factual Background

The Complainant is the publisher of a number of magazines with well known titles including WORLD OF INTERIORS, TATTLER and HOUSE AND GARDEN. The Complainant is a member of an international group of publishing companies being a subsidiary of the US based company Advance Magazine Publishers Inc., which also publishes a number of well known magazines such as VOGUE, GLAMOUR, GQ, and CONDE NAST TRAVELLER.

The Complainant’s magazine WORLD OF INTERIORS was launched in the United Kingdom on November 1981 and has been published each month since then.

The Complainant is the owner of the ccTLD Internet domain name <worldofinteriors.co.uk> and through a related company CondeNet UK Limited maintains a website at this address which features articles and other content connected with the WORLD OF INTERIORS magazine.

The Complainant is the owner of a large portfolio of registered trademarks in international class 16 for the mark THE WORLD OF INTERIORS in a number of countries including a Community Trademark registration number 210898 registered in international classes 16, 36 and 28. Additionally the Complainant has pending applications for registration of THE WORLD OF INTERIORS trademark in international class 16 in Brazil, India, Spain.

The earliest application for these registrations was made on February 28, 1984, for the Canadian registration number TMA300367 and the application for registration of the Australian trademark was made on November 27, 1984.

The application for registration of the corresponding United Kingdom trademark was filed on March 4, 1986. The Spanish application is pending.

The Complainant also owns the domain name registration <worldofinteriors.com>.

The Respondent was born in England and for the past 13 years has been engaged in the interior decoration business trading as SUPERIOR INTERIORS in Mallorca, Spain, mostly retailing curtains, upholstery and soft furnishings for villas and yachts.

The domain name in dispute was registered by the Respondent on October 19, 2003. She has also registered the domain names <superiorinteriores.com> and <vogueinterior.com>.

5. Parties’ Contentions

A. Complainant

On October 16, 2003, a firm of Spanish attorneys acting for another member of the Complainant’s group of companies wrote to the Respondent in relation to the Respondent’s registration of said domain name <vogueinterior.com>.

The Respondent replied to that letter on November 18, 2003, and in her reply the Respondent stated that she had also registered the domain name in dispute in these proceedings on October 19, 2003. The Complainant was thereby alerted to the fact of this registration.

By letter dated February 12, 2004, lawyers acting for the Complainant wrote to the Respondent placing her on notice of the Complainant’s rights in the name THE WORLD OF INTERIORS. Said letter inter alia requested that the Respondent voluntarily transfer the domain name in dispute to the Complainant and that she give certain undertakings.

The Respondent replied on February 17, 2004, and in her reply inter alia offered to sell the domain name to the Complainant in the following terms: “Finally, if your client would like to make a suitable offer to purchase my property, then perhaps they might like to communicate the same, who knows it may be more cost effective for them, if not for you. They may contact me directly via e mail, or indeed, so may you, if you also handle commercial matters on their behalf.”

The Complainant submits that the Respondent has a close connection with the United Kingdom. In this regard the Complainant refers to the fact that although the Respondent resides Spain, she has an English name, writes English with the fluency of a native English speaker, uses a yahoo.co.uk e-mail address and in her e-mail communication of November 18, 2003, the Respondent states that she has referred the matter to “the relevant people in the UK regarding Copyright”.

The Complainant submits that the domain name in dispute resolves to a page operated by the Registrar entitled “Coming Soon” on which there are posted references to furnishings and interior designs and various links to websites with which the Respondent has no connection.

The Complainant submits that the domain name in dispute is identical to the Complainant’s magazine title and registered trademark THE WORLD OF INTERIORS, the “.com” element being non-distinctive and the spaces separating the four words being irrelevant for the purposes of these proceedings.

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name in dispute. The Complainant has not given any consent or authorization to the Respondent to use said trademark or to register said domain name.

The Respondent has not at anytime made any legitimate use of the domain name. There is no evidence that the Respondent conducts any legitimate business or activities under the domain name or the trading name or the mark THE WORLD OF INTERIORS. Furthermore the Complainant submits that there is no evidence that the Respondent has any present bona fide interest in establishing any business or activities under or by reference to said domain name. To the extent that the Respondent may conduct or intend to conduct any business or non-profit making activity by reference to the trademark THE WORLD OF INTERIORS, such use would not be bona fide or legitimate for the purpose of these proceedings on the grounds that the Respondent was fully aware of the Complainant’s rights when she applied to register the domain name in dispute.

The Complainant alleges that the domain name in dispute was registered and is being used in bad faith. In support of its case, the Complainant refers to the provisions of paragraph 4(b) of the Policy for evidence of registration and use of the domain name by the Respondent in bad faith. The Complainant has argued that:

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

(ii) the 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, and that she has engaged in a pattern of such conduct; and

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; and

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

The Complainant submits that when the Respondent registered said domain name, she was already in dispute with an associated company within the Complainant’s group in relation to another domain name <vogueinterior.com>. The Complainant submits that this is evidence of the fact that when the Respondent registered said domain name she was aware of the Complainant’s ownership of and rights in the trademark THE WORLD OF INTERIORS.

The Complainant submits that the Respondent appears to have close connections with the UK. Furthermore the Complainant submits that since the Respondent has a trading name SUPERIOR INTERIORS, she would appear to be involved in the business of interior design. This, it is alleged, makes it clear beyond doubt that the Respondent knew of the Complainant’s magazine title and its rights in the trademark THE WORLD OF INTERIORS when she registered the domain name.

The Complainant submits that it is clear that the Respondent’s primary intention in registering the domain name was to assist her as a negotiating tool in the pre-existing dispute with the Complainant’s associated company relating to the registration of the <vogueinterior.com> domain name. In her abovementioned communication to the attorneys representing the associated company, the Respondent stated “[h]aving been back on the web to look at what is available to purchase, I have since added to my domains <theworldofinteriors.com>”.

The Complainant submits that it is clear from this statement that the Respondent was indicating that if the Complainant’s associated company withdrew its complaint in respect of <vogueinterior.com>, that she would transfer the <theworldofinteriors.com> domain name.

The Complainant further submits that in this exchange of correspondence, the Respondent impliedly also threatened that if the Complainant were not to co-operate, then she would maintain the domain name in dispute and thereby block the Complainant from obtaining its own registration for this domain and she thereby impliedly threatened to bring the domain name into full competitive, deceptive or damaging use or to transfer it to a third party and possibly to a third party that may be in competition with the Complainant.

The Complainant further submits that it is clear that the Respondent impliedly offered to transfer the domain name to the Complainant for a consideration far in excess of the Respondent’s costs in obtaining registration of the domain name.

The Complainant further submits that the Respondent registered said domain name to prevent the Complainant, as the owner of the THE WORLD OF INTERIORS trademark from reflecting it in a corresponding domain name. In this regard the Complainant refers to the fact that the Respondent registered said domain name in response to said dispute relating to the <vogueinterior.com> domain name registration.

The Complainant further submits that the Respondent registered said domain name primarily for the purpose of disrupting the business of a competitor in that the Respondent would appear to be engaged in interior design carrying on business under the name SUPERIOR INTERIORS and it is clear that the Respondent impliedly threatened that the Complainants business, being a magazine concerned with interior design would be disrupted if members of the Complainant’s group of companies refused to co-operate with her.

Finally the Complainant submits that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

In her Response, the Respondent states that she was born in London and has been living in Mallorca for the past 13 years. She is self employed and for the past 10 years has been the proprietor of a shop engaged in the business of interior decoration particularly engaged in curtain making and the supply of upholstery and soft furnishings for villas and yachts.

Having become aware of the possibility of promoting her business on the Internet she registered the domain name <superiorinteriores.com>. Of the available domain names, the Respondent considered this domain name to be the nearest to the name of her business. She explained her choice of names in the following terms: “I purchased the nearest name available to my business, the original name is owned by a Canadian company, but it afforded me to begin a website which I cold put my portfolio and give my clients access to information.”

The Respondent was concerned that other local competitors in Spain may copy her idea and the nearest “English people” to her trade under the name of VOGUE INTERIORS. She registered the domain <vogueinterior.com> to prevent her local competitors from using this name on the Internet.

When the Respondent received the abovementioned letter from the Spanish lawyers on October 16, 2003, she sent a holding reply. A month and a day later, when she had been contacted again to enquire about her response, she carried out research into the domain names that were available that were identical to the names of the magazines owned by the Conde Nast Group and discovered that there was a number of domain names available that were identical to their magazine titles.

These available domain names included the domain name <theworldofinteriors.com> that is the subject of the present administrative proceeding and after some hesitation she purchased this domain name.

The Respondent states that the Complainant is the owner of the domain name <worldofinteriors.com> but does not use it. Instead the Complainant refers the readers of its magazine to other sites. Furthermore the United Kingdom ccTLD domain name <theworldofinteriors.co.uk> is owned by another individual with an address in London.

The Respondent states that she has apologized to her local trading competitors with regard to the registration of the <vogueinterior.com> domain name.

In response to the allegations made in the Complaint, the Respondent states that she did not register the domain name in bad faith. She has never used the domain name and never intended to use it or transfer it to anyone. She never intended to disrupt the business of “Vogue New York” but only intended to protect her own long standing running business from local competition.

The Respondent states that she registered said domain name not as a negotiating tool but to demonstrate the incompetence on the part of the Complainant’s group of companies. She rejected the offer of US$100 because it was of no interest to her and she preferred to keep the domain name.

The Respondent also states that she was not responsible for the links on the site that has been established by the Registrar.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name registered by the Respondent 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 domain name in question; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in numerous jurisdictions in Europe and throughout the world both at common law and through its trademark registrations in the magazine title and trademark THE WORLD OF INTERIORS. Of particular relevance is the Community Trademark registration number 210898 registered in international classes 16, 36 and 28 that gives the Complainant rights in both the United Kingdom and the Spain.

It is clear that the domain name <theworldofinteriors.com> in issue in these proceedings is identical to the Complainant’s trademark. As stated by the Complainant, both the “.com” element and the spaces separating the four words are irrelevant for the purposes of these proceedings.

The Respondent has not put this matter in issue. The Complainant has succeeded in establishing the first element of the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Aside from the fact that she is the registered owner of the domain name registration, the Respondent makes no claim to having any rights or interest in the said domain name. She has clearly stated that she registered the domain name merely to demonstrate the incompetence on the part of the Complainant’s group of companies. This is not a legitimate interest under paragraph 4(c) of the Policy.

It follows that the Complainant has succeeded in the second part of the test in paragraph 4(a) of the Policy also.

C. Registered and Used in Bad Faith

The Respondent has admitted that she was aware of the Complainant’s rights in the magazine title and trademark THE WORLD OF INTERIORS when she registered the domain name. In fact she has clearly stated in her Response, that she registered the domain name because it was one of the magazine titles published by the Respondent’s group of companies.

The Complainant has referred to each of the circumstances indicating bad faith set out in paragraph 4(b) of the Policy in support of its allegations that the domain name was registered and used in bad faith.

Having considered the submissions of both parties, this Administrative Panel is of the view that the relevant provisions are to be found in paragraphs 4(b)(I) and 4(b)(ii) of the Policy.

There are circumstances indicating that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of her documented out-of-pocket costs directly related to the domain name.

The Respondent has denied this and states that she registered the domain name to be difficult and to embarrass the Complainant. She refused an offer of USD$100 to transfer the domain name because it was of no interest to her.

It is difficult to reconcile this defence by the Respondent with her statement in her abovementioned letter on February 17, 2004: “Finally, if your client would like to make a suitable offer to purchase my property, then perhaps they might like to communicate the same, who knows it may be more cost effective for them, if not for you. They may contact me directly via e mail, or indeed, so may you, if you also handle commercial matters on their behalf.”

Nonetheless, while it may be necessary for someone else to decide this issue in another context, for the present administrative proceeding, it is not necessary for this Administrative Panel to determine this issue.

In refusing to transfer the domain name when requested, the Respondent was clearly aware that she was going to prevent the Complainant as the owner of the trademark THE WORLD OF INTERIORS from reflecting the mark in a corresponding domain name. Furthermore the Respondent has admitted that she has engaged in a pattern of such conduct by registering the <vogueinterior.com> domain name which she has stated, she believed to be the trademark of one of her local competitors.

On the balance of probabilities she was also aware that members of the Complainant’s group would also lay claims to same.

Furthermore, with regard to the registration of the domain name <superiorinteriores.com>, the Respondent has stated that the trading name SUPERIOR INTERIORS is not original and belongs to a Canadian firm.

This Administrative Panel therefore concludes that the Respondent has registered the domain name in order to prevent the owner of the trademark THE WORLD OF INTERIORS from reflecting the mark in a corresponding domain name, and that she has engaged in a pattern of such conduct.

The Complainant has therefore established that the circumstances described in paragraph 4(b)(ii) of the Policy are present and this Administrative Panel accepts these circumstances as evidence that the domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the three elements of the test set out in paragraph 4(a) of the Policy and is entitled to succeed in its application.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <theworldofinteriors.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist

Dated: October 25, 2004