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Advance Magazine Publishers Inc. v. Svanity Group [2004] GENDND 426 (26 April 2004)

1. The Parties

The Complainant is Advance Magazine Publishers Inc., Four Times Square, New York, United States of America, represented by Freshfields, Bruckhaus, Deringer, Italy.

The Respondent is Svanity Group, of Moscow, Russian Federation.

2. The Domain Name and Registrar

The Disputed Domain Name <svanityfair.com> (the "Disputed Domain Name") is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 22, 2003. On December 23, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Disputed Domain Name. On December 30, 2003, Go Daddy Software 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, billing, and technical contact. 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").

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 January 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 30, 2004.

The Complainant requested a 3-member Panel for this Administrative Proceeding and the Center appointed Alistair Payne, David H. Bernstein and Irina V. Savelieva as Panelists in this matter on March 5, 2004. 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.

On March 17, 2004, the Panel issued Procedural Order No. 1, which stated, inter alia, the following:

"The Panel has reviewed the Case File and notes that the Center has forwarded the Complaint to the Respondent:

1. by courier (to Svanity Group, C/O Kournikova Irina, 222 Alexander Newsky Square, 105064 Moscow, Russian Federation) but that this package appears to have been returned to the Center without reaching the Respondent;

2. by email (to svanitygroup@yahoo.com) but this email was returned to the Center as undeliverable; and

3. by email (to postmaster@svanityfair.com) but the Panel has no way of knowing whether this is an active email account used by the Respondent.

Subsequently, the Center sent its notifications of Respondent Default, Panelist Appointment, Presiding Panelist Selection List, and Appointment of Administrative Panel solely to the inactive svanityfair@yahoo.com email address.

Although the Center appears to have made efforts to notify the Respondent of the filing of the Complaint and of subsequent developments in this proceeding, in light of the Respondent's default, the Panel cannot be sure that actual notice was received. Because the touchstone of any dispute under the Policy is due process and a fair opportunity to participate, the Panel has carefully reviewed the record to determine whether the Center has employed all "reasonable available means calculated to achieve actual notice to Respondent." Rule 2(a); see also Kidman v. Zuccarini, WIPO Case No. D2000-1415.

In this case, the Panel believes that additional notice should have been provided to the Respondent. In particular, under paragraph 2(a) of the Rules, the Panel believes that the Center also should have forwarded the Complaint to the Respondent at the email address provided on the Respondent's active "www.svanityfair.com" website (svanity@mail.com) and at the email address provided by the Registrar, Go Daddy, in its Registrar Verification (svanitygroup@moscowmail.com).

Accordingly, pursuant to paragraphs 10(b) and (c) of the Rules, the Panel orders that:

1. the Center forward the Complaint, and all other documents in this case, including this Order, to the Respondent by email at svanity@mail.com and svanitygroup@moscowmail.com; and

2. the Respondent be given twenty (20) days, from the date of the Center's email as noted under paragraph 1 above to submit its Response to the Center in accordance with paragraph 5(b) of the Rules, as well as any other submissions in response to the other documents generated in this case.

Pending receipt of any Response by the Respondent, the Notification of Respondent Default and the Notification of Projected Decision Date are hereby vacated. If Respondent does not timely submit a Response, the Center shall issue a new Notification of Respondent Default and shall set the projected decision date for 14 days from the issuance of said Notification."

On March 17, 2004, the Center forwarded the Complaint, and all other documents in this case including Procedural Order No. 1 by email to the Complainant at its designated contact email addresses and to the Respondent at svanity@mail.com, svanitygroup@moscowmail.com, and svanitygroup@yahoo.com.

The Respondent sent an email in Italian, from svanity@mail.com, to the Center on March 23, 2004. The Center translated this email as stating the following:

"Hello, Thank you for contacting us. We read carefully all the letters we receive, but due to their large number we cannot guarantee that each one will receive a personal response.

If possible, we will contact you, in any event thank you again for contacting us.

SVANITYFAIR.COM Team"

The Respondent submitted no other Response within the prescribed timeframe and accordingly the Center notified the Respondent's default on April 8, 2004.

4. Factual Background

The Complainant, through its unincorporated division "The Condé Nast Publications Inc" ("Condé Nast"), publishes such well-known magazines such as Vanity Fair, Vogue, Glamour, The New Yorker, Self and GQ. Condé Nast's magazines have an Internet presence and the company operates, with its affiliates, several popular websites that incorporate content from many of its magazines.

For the purposes of this Complaint, the magazine Vanity Fair is an entertainment magazine providing trend reports and the latest social and fashion news and celebrity gossip. It has been sold and distributed worldwide, eg in the US, Canada, Europe, Middle East, Oceania and Africa reaching an average monthly audience of over 1,100,000. The Italian edition of Vanity Fair has been published in Italy from October 2003, by the Complainant's local subsidiary.

The Complainant is the owner of several trade mark registrations for VANITY FAIR in connection with magazines worldwide. In particular, for the purposes of this Complaint, the Complainant currently owns an Italian trade mark registration No RM91C004163 of November 27, 1991, and a CTM registration for the mark VANITY FAIR No 000628925 of October 24, 2001.

Since 1996, the Complainant, through Condé Nast, has been operating the website "www.vanityfair.com" where the Complainant markets its magazine worldwide and readers may sign a subscription to its Vanity Fair magazine. From January 2003, the Complainant, through its Italian subsidiary, has operated the Italian website at "www.vanityfair.it" that specifically targets the Italian audience and where Internet users may sign a subscription to the Italian version of the Vanity Fair magazine.

On Thursday, April 22, 2004, the Complainant notified the Center by supplementary filing that the website to which the Disputed Domain Name resolves had become inactive as a consequence of the Italian Police taking action in relation to complaints of alleged defamatory statements on the website.

5. Parties' Contentions

A. Complainant

1. The Disputed Domain Name is confusingly similar to the Complainant's marks

As a result of its longstanding use and numerous registrations for VANITY FAIR and its international notoriety, thousands of consumers worldwide instantly recognize the name and mark VANITY FAIR and associate it with the Complainant's upscale entertainment magazines and online services.

Without any legitimate basis, the Respondent has registered the Disputed Domain Name which fully incorporates the trade mark VANITY FAIR. The addition of the letter "s" before the Complainant's mark does not sufficiently distinguish the Disputed Domain Name from the Complainant's registered marks and the Complainant seeks to rely on a number of previous cases decided under the Policy, including Amazon.com, Inc. v. Oluseyi Ikhizamah, WIPO Case No. D2002-1168 and Wal-Mart Stores, Inc. v. G.W. and Mm Mmmm, WIPO Case No. D2001-0277, to support its argument that the addition of the letter "s" does not prevent the Panel from finding that the Disputed Domain Name is confusingly similar to the Complainant's marks.

In addition to the similarity of the terms, there is no doubt that the Disputed Domain Name, used for online publications about entertainment and celebrities, is likely to cause confusion to the extent that consumers may believe that the Disputed Domain Name refers to the Italian online publication of the Complainant's magazine. Consumers who view the Disputed Domain Name will instantly recognize the VANITY FAIR brand and assume that the domain name links to websites for Vanity Fair magazines published by the Complainant.

2. The Respondent has no rights or legitimate interests in the Disputed Domain Name

The Complainant has never granted the Respondent the right to use or register the VANITY FAIR marks, either in connection with a domain name registration or a bona fide offering of goods and/or services or for any other reason. Prior to its registration of the Disputed Domain Name, the Respondent had no legitimate use or right to use the VANITY FAIR brand.

The Respondent's failure to provide its true identity also shows that it cannot demonstrate any legitimate rights or interest in the Disputed Domain Name.

3. The Disputed Domain Name was registered and is being used in bad faith

The Complainant contends that the facts of this case clearly demonstrate that the Respondent registered the Disputed Domain Name for the purpose of disrupting the Complainant's business and to attract Internet users to its website by creating a likelihood of consumers mistakenly associating such site with the Complainant's goodwill.

Further, the website operated under the Disputed Domain Name provides online publication about entertainment and celebrities, exactly the same kind of business carried out by the Complainant under its well known brand. The Respondent's use of the Disputed Domain Name suggests that the Respondent's business has some connection with the industry of publishing entertainment magazines, where the Complainant's VANITY FAIR trade mark is well-known. The Complainant therefore contends that the Respondent was intent on using that knowledge by registering the Disputed Domain Name to attract Internet users to its own website and to lead consumers to believe that the Complainant is somehow associated with the Disputed Domain Name.

The Complainant's counsel has conducted some investigations and asserts that the Registrant of the Disputed Domain Name (the Respondent in this Administrative Proceeding) and the administrative and technical contacts listed in the WHOIS information for the Disputed Domain Name are invalid, and that there is no company known as Svanity Group and no individual known as Mrs. Kournikova Irina in Moscow/Russian Federation and that the relevant address does not exist.

The Respondent's bad faith is further evidenced by the fact that it is specifically providing false and/or inexistent contact information to the Registrar, Go Daddy Software, and is in breach of its warranty under paragraph 2(a) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Panel considers that it is appropriate to proceed to decide this case in spite of the Complainant's advice, referred to in section 4 above, that the Respondent's website has been rendered inactive. The Panel notes that the Complainant has not requested the withdrawal of its Complaint and that the Panel's decision will assist in clarifying ownership rights in the Disputed Domain Name and in facilitating its' transfer as appropriate.

Under Paragraph 2(a) of the Rules the Respondent was given notice of this proceeding by reasonably available means calculated to achieve actual notice to the Respondent of the Complaint. However, as previously noted the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant's assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will accordingly proceed to a decision on the Complaint.

The Respondent's default does not automatically result in a decision in favour of the Complainant and the Complainant must still prove the elements required by the Policy.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(i) the Disputed Domain Name 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; and

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

A. Identical or Confusingly Similar

This element of the Policy requires the Complainant to prove (a) that it has rights in a trade mark or service mark, and (b) that the Disputed Domain Name is identical to or confusingly similar to such trade mark or service mark.

The Complainant has established that it has registered trade mark rights in the mark VANITY FAIR and has provided evidence of substantial use of the mark in connection with magazines and online publications. The Respondent did not present any evidence of having rights or legitimate interests in the trade marks or trade names VANITY FAIR or SVANITY FAIR.

The Disputed Domain Name incorporates the Complainant's distinctive registered mark VANITY FAIR in its entirety with the only other difference (excluding the generic .com suffix) being the addition of the letter "s" at the beginning of the Disputed Domain Name. Mere inclusion of the additional letter "s" does not in this Panel's view distinguish the domain name from the Complainant's VANITY FAIR trade mark. The Panel considers that the Disputed Domain Name <svanityfair.com> is confusingly similar to the Complainant's registered trade mark VANITY FAIR.

Accordingly, the Panel finds that the Complainant has rights in the mark VANITY FAIR, that the Disputed Domain Name is confusingly similar to the VANITY FAIR trade mark and this element of the Policy is therefore established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances that a Respondent may use to demonstrate its rights or legitimate interests to the domain name.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant's assertions, it is for the Panel to consider whether the Respondent's use of the Disputed Domain Name demonstrates that it has rights or legitimate interests in the domain names.

Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the Disputed Domain Name for a bona fide offering of goods and services. The Complainant points out that the website that the disputed domain resolves to is only being used for online publications about entertainment and celebrities, which is likely to cause confusion to the extent that consumers may believe that <svanityfair.com> refers to the Italian online publication of Complainant's magazine. Under paragraph 4(c)(i) of the Policy, the Panel finds that the Disputed Domain Name has not been and is not being used, by the Respondent for a bona fide offering of goods and services.

Secondly, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name. There is no evidence that the Respondent is known by or uses the Disputed Domain Name as its business or company name. The Complainant contends that the Respondent is not commonly known by the Disputed Domain Name and under paragraph 4(c)(ii) the Panel does not have any grounds to believe that the Respondent is known by or uses the name "vanityfair" or "svanityfair".

The Panel finds that the Complainant has sufficiently fulfilled its burden of proof to show the Respondent has no legitimate rights or interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the list of circumstances which are deemed to be evidence that a Respondent has registered and used a domain names in bad faith, inter alia:

- the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

- by using the domain name, the Respondent has intentionally attempted 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 as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

In view of the notoriety of the VANITY FAIR mark, the similarity of the Respondent's website content to the Complainant's website content and the Respondent's failure to reasonably explain why it chose to use the <svanityfair.com> domain name, the Panel accepts that the Respondent knowingly registered its domain name incorporating the VANITY FAIR mark. By doing so the Panel considers that the Respondent has intentionally attempted to attract for commercial gain, internet users to its web site (being a site that includes content similar to that published by the Complainant under its VANITY FAIR mark) by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and its content. Therefore, the Panel considers that the Respondent has registered and used the domain name in bad faith in terms of paragraph 4(b)(iv) of the Policy.

Furthermore, the Respondent used the confusingly similar domain name for a website with online materials about entertainment and celebrities which the Panel believes may or is likely to cause disruption to the Complainant's business in Italy. Accordingly the Panel finds that the Respondent has also registered and used the domain name in bad faith in terms of paragraph 4(b)(iii) of the Policy.

The Panel notes that the courier package of materials forwarded to the Respondent's contact address was returned as the Respondent does not apparently operate from that address. This would tend to support the Complainant's contention that the Respondent has provided false or incorrect contact information to the Registrar (in this case Go Daddy Software). When coupled with the Respondent's failure to respond to the Complaint this further points to the Respondent's bad faith for the purposes of this element of the Policy.

The Panel finds that the Complainant has proved this element of the Policy and therefore the Complaint succeeds.

7. Decision

For all the foregoing reasons and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <svanityfair.com> be transferred to the Complainant.

Alistair Payne
Presiding Panelist

David H. Bernstein
Panelist

Irina V. Savelieva
Panelist

Dated: April 26, 2004