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Advance Magazine Publishers Inc. v. Very Vogue/Kerry Gao/The Manager [2004] GENDND 761 (11 June 2004)

1. The Parties

The Complainant is Advance Magazine Publishers Inc., New York, United States of America, represented by Blake Dawson Waldron Lawyers, Australia.

The Respondent is Very Vogue/Kerry Gao/The Manager, Hong Kong, SAR of China.

2. The Domain Names and Registrar

The disputed domain names are <veryvogue.biz>, <veryvogue.com>, <veryvogue.info>, <veryvogue.net>, <veryvogue.org>, all of which are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2004. On April 29, 2004, the Center transmitted by email to eNom as Registrar a request for registrar verification in connection with each of the domain names at issue. On April 30, 2004, eNom transmitted by email to the Center its verification response in respect of each of the domain names at issue 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 May 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2004.

The Center appointed John Terry as the Presiding Panelist and David H. Bernstein and Yong Li as Panelists on June 3, 2004. The Panel finds that it was properly constituted. The Panelists have each 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 certifies that a copy of the Complaint was transmitted by email to the Respondent and by post “care of Mr. Ryan Gollan” at an address in Sydney Australia. The Complaint states that contact had been established previously with Mr. Ryan Gollan of Vivachi International Pty Ltd “who has indicated that he is connected with or otherwise able to pass on information to the Respondent”. It appears out of abundant caution the Complainant served a copy of the Complaint on Mr. Ryan Gollan and the Center has copied all subsequent communications to Mr. Ryan Gollan.

The Respondent did not submit any response, but after

(a) appointment of the Panel, and

(b) notice being served by email by the Center on the parties,

(c) an email from Mr. Ryan Gollan was received by the Center and by each of the Panelists directly; such unilateral communication to the Panelists is in contravention of the Rules, a point immediately made clear by the Center in its email response of June 3, 2004.

No properly formulated request by the Respondent (or any other person) for an extension of time for a belated response has been received. The document comprising the email from Mr. Ryan Gollan will not be admitted into the proceedings as that party is not the Respondent or an accredited representative of the Respondent; the statements made are not sworn or certified and on their face do not have any probative value.

4. Factual Background

Paragraphs 12-34 of the Complaint, which is duly certified by Australian lawyers representing the Complainant, sets out extensive background which the Panel accepts entirely in terms of the factual matters asserted. For present purposes the Panel considered it sufficient to summarise the factual background by quoting the following paragraphs 12-18 from the Complaint.

“[12.] The Complainant is one of the world’s most successful magazine publishers. Through its unincorporated division, The Condé Nast Publications Inc. (hereinafter Conté Nast), the Complainant publishes well-known magazines such as Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ. Condé 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. Condé Nast’s web sites can be found at “www.condenast.com”.

[13.] Vogue was launched in 1892, and is the world’s major fashion and style magazine for women.

[14.] The U.S. edition of Vogue reaches an average monthly audience of over 1,100, 000. The Australian edition of Vogue has an average monthly circulation of over 60,000. A circulation report sourced from the Audit Bureau of Circulation showing the monthly circulation of Vogue Australia (for the period 2000 to 2003) and a report detailing circulation figures for the US edition of Vogue in the US and in other countries (for the period 2001 to 2002) are attached as Annex C.

[15.] In addition to the U.S. edition, Vogue is published through the Complainant’s subsidiary, Conde Nast International, Inc. or through local licensees in Australia and in the following countries: England, Spain, Brazil, France, Germany, Italy, Greece, Russia, Korea, Taiwan and Japan.

[16.] The Complainant owns numerous trade mark applications and registrations for VOGUE in connection with magazines worldwide, including numerous registrations and applications in Australia. A trade mark report showing the Complainant’s worldwide registrations and a sample of registration certificates is attached as Annex D. A schedule of all Australian trade mark registrations and applications is attached as Annex E.

[17.] In addition to its print magazines, the Complainant operates through its affiliates and licensees the British, French, Italian, German, Spanish, Australian, Japanese, Korean and Taiwanese online editions of Vogue. Attached as Annex F are print-outs from the Australian Vogue web site “www.vogue.com.au”.

[18.] As a result of its longstanding use and numerous U.S. and international registrations and its international notoriety, millions of consumers worldwide instantly recognize the name and mark VOGUE and associate the mark with the Complainant’s up-scale fashion and style publications and online services.”

The Complaint certifies an extensive history of attempts by the Complainant to resolve its objections to the present domain name registrations in the name of the Respondent and includes obtaining written undertakings from a person purporting to be the Respondent. However, despite diligent efforts the lawyers representing the Complainant could make no progress with named individuals who were identified in correspondence. Physical addresses were identified but attempts to serve documents were unsuccessful due to the addressee apparently not existing at that address.

The material before the Panel does not show any use anywhere in the world of the conduct of a business or any other activity by the Respondent with reference to the present domain names.

The Complaint certifies that following correspondence with the registrant of <veryvogue.com> the lawyers for the Complainant received signed undertakings, apparently executed June 14, 2001, by Ryan Gao, a representative of the Respondent. The Complaint shows that the registrant information in respect of the domain name <veryvogue.com> has changed a number of times, the latest registrant being Mr. Kerry Gao, apparently as a successor of Ryan Gao. Subsequently the other four domain names in the present matter were registered by the Respondent.

The Panel accepts the facts set out in the Complaint in the absence of a response. This proposition was established in Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

5. Parties’ Contentions

A. Complainant

The Complainant contends that all the domain names in the present matter incorporate the Complainant’s trade make VOGUE and inevitably the registration of the present domain names will lead to consumer confusion as the Complainant’s trade mark VOGUE is well known and is the dominant element of the domain names in issue.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain names and the Respondent has never had any legitimate use or right to use the name VOGUE or <veryvogue.com> and the Respondent was not commonly known as “veryvogue”.

Thirdly, the Complainant contends that it need only show one of the four non-exclusive circumstances under paragraph 4(b) of the Policy to show registration and use of the domain names in dispute was in bad faith. The Complainant contends that any use of the disputed domain names on a website would be trading on the acquired goodwill and reputation of the Complainant’s trade mark VOGUE and the Respondent has used this mark in its domain names to divert consumers to the Respondent’s website for the Respondent’s own commercial gain. Further, the Respondent had actual knowledge of the Complainant’s trade mark when it registered the domain names and this supports the finding of bad faith. Furthermore, bad faith is contended because the Respondent has continually provided false and misleading contact information relating to all of the domain name registrations in issue. Failure to provide accurate contact information is a breach of the UDRP and breach of the registration agreement with the Registrar eNom, Inc., and in particular clause 7(v).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its proprietorship internationally under a well known trade mark VOGUE, that the present domain names are characterised by the words “Very Vogue” and this is confusingly similar to the Complainant’s trade mark. The word “vogue” is the dominant and characterising feature of the domain names in dispute. It is well established that the suffixes “.com” and the like are to be ignored in assessing identity and confusing similarity. The prefix “very” in this case is merely a superlative adjective and adds nothing by way of any distinguishing element. Thus confusing similarity is established. This principle is well illustrated by the UDRP decision in Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002.

Furthermore, analogous prior UDRP decisions concerning the Complainant’s trade mark VOGUE are Advanced Magazine Publishers, Inc. v. HiLetsWorkTogether.com, WIPO Case No. D2001-1005 (November 26, 2001); Advance Magazine Publishers Inc. v. Vogue XO, WIPO Case No. D2002-0797 (November 1, 2002); Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668 (December 12, 2003).

B. Rights or Legitimate Interests

To determine whether the Respondent has any rights or legitimate interests in the domain names, one must first identify who the Respondent is. That has been unusually difficult in this case.

The Complaint identifies at various times different individuals and entities and changes in the entities involved as the registrant or contact or responsible person for <veryvogue.com> including Kerry Gao.

As evidenced in Annex H, the lawyers for the Complainant obtained in August 2001, some written undertakings to transfer the initially-registered domain name to the Complainant, which have not been honoured. At no time did the registrant articulate any argument that it was commonly known as “Very Vogue” or had any other rights or legitimate interests in the domain name. Subsequently the four other domain names in issue were registered apparently by Kerry Gao with contact information which the Complaint certifies is “incomplete and incorrect” and that no telephone or facsimile numbers have been provided.

In light of the totality of this conduct, Complainant has sufficiently proven that Respondent (as well as the prior registrants and the other associated persons referred to in the Complaint) has no rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Panel finds that by adopting domain names characterised by the dominant well known trade mark VOGUE, there could only be one effect of using the present domain names and that would be to divert consumers to a website controlled by the Respondent for the Respondent’s commercial gain. In the absence of evidence to the contrary from the Respondent, the Panel draws the inference that this was the intent at the time of the registrations being made and thus registration and use in bad faith in terms of paragraph 4(b) of the Policy is established.

The Panel further finds that because of the well known character of the trade mark VOGUE, the Respondent must have had actual knowledge of the trade mark VOGUE and by registering the present domain names, acted in bad faith. Bad faith is further substantiated by the provision of false and misleading contact information. Advance Magazine Publishers, Inc. v. Models USA, Inc., WIPO Case No. D2002-0907 (December 19, 2002). The dealings involving the Respondent and other parties and entities identified as associated with or as predecessors to the Respondent are held to be conduct amounting to obfuscation and comprises confusing and deceptive conduct to an extent that clearly establishes bad faith within the meaning of the Policy. Yet another indication of bad faith is the registration of additional “veryvogue” domain names after the Complainant expressed its concerns to Respondent. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185 (May 28, 2003).

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy, the Panel orders the domain names, <veryvogue.biz>, <veryvogue.com>, <veryvogue.info>,

<veryvogue.net> and <veryvogue.org>, be transferred to the Complainant.

John Terry
Presiding Panelist

David H. Bernstein
Panelist

Yong Li
Panelist

Dated: June 11, 2004