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Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com [2005] GENDND 1463 (9 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com

Case No. D2005-0615

1. The Parties

The Complainant is Advance Magazine Publishers Inc., New York, New York, United States of America and its French subsidiary Les Publications Condé Nast S.A., Paris, France, represented by Sabin Bermant & Gould, LLP, United States of America.

The Respondent is ChinaVogue.com, Tangshan, Hebei, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <chinavogue.com> is registered with Go Daddy Software Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2005. On June 15, 2005, the Center transmitted by email to Go Daddy Software Inc. a request for registrar verification in connection with the domain name at issue. On June 15, 2005, Go Daddy Software Inc. 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 June 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2005.

The Center appointed Anders Janson, David H. Bernstein and Yong Li as panelists in this matter on July 28, 2005. 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established:

The Complainant, Advance Magazine Publishers Inc., is a privately-owned magazine publishing company that, through its unincorporated division The Condé Nast Publications Inc., publishes well-known magazines such as “Vogue”, “Glamour”, “The New Yorker”, “Self”, “Vanity Fair” and “GQ”. The Condé Nast Publications Inc. also has an Internet presence and the company operates, with its affiliates, several web sites that incorporate content from its magazines.

The magazine “Vogue” was launched in 1892, and is one of the world’s largest fashion and style magazines for women. The U.S. edition of “Vogue” reaches an average monthly audience of over 1,275 000 people. The edition is also sold in Canada and distributed in many countries worldwide, including China. In addition to the U.S. edition, “Vogue” is published through subsidiaries of the Complainant or through local licensees in United Kingdom of Great Britain and Northern Ireland, France, Germany, Spain, Brazil, Italy Greece, Portugal, Russian Federation, Republic of Korea, Taiwan Province of China, Japan, Australia and Latin America.

The Complainant has registered a large number of national, Community and international trademarks reflecting the term “Vogue” such as “VOGUE CAFÉ”, “CASA VOGUE”, “VOGUE DECORATION”, “VOGUE HOMES”, “VOGUE HOMMES”, “L’UOMO VOGUE”, “VOGUE BRIDES”, and “VOGUE KIDS”. The Complainant’s trademark portfolio also includes the following registered trademark.

- Trademark “VOGUE.COM”, No. 2592452, registered in the United States of America on July 9, 2002.

The Complainant and its subsidiaries or local licensees have registered and use inter alia the following domain names: <vogue.com>, <vogue.co.uk>, <vogue.fr>, <vogue.de> and <vogue.co.jp>. The Complainant has registered more than 30 trademarks in the People’s Republic of China for “Vogue”. The first registration was made in 1929. According to the Complainant, an edition of “Vogue” will be launched in the People’s Republic of China in September 2005.

The Panel finds it established that the Complainant’s trademarks are well known, and used in commerce around the world.

The Respondent is a company with a stated address in the People’s Republic of China, who does not have any affiliation with the Complainant, nor is or has been a representative or licensee of the Complainant, or otherwise authorized to use the Complainant’s marks.

The disputed domain name was registered by the Respondent with Go Daddy Software Inc. on December 29, 1999.

When trying to enter the disputed domain name <chinavogue.com>, no web site connected to the domain name has been found.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name;

- The domain name has been registered and is being used in bad faith; and

- The domain name <chinavogue.com> should be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed 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) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The domain name at issue is <chinavogue.com>. The Complainant is the worldwide holder of a large number of registered trademarks containing the word “Vogue”. The Panel finds it established that the trademark is very well known.

The disputed domain name contains the Complainant’s well know trademark “VOGUE”, with an additional geographic term, “China”. The Complainant has asserted that Internet users may be confused as to the origin of the disputed domain name.

The Panel finds, as have numerous previous UDRP panels, that the addition of a geographic term to a well known trademark does not sufficiently distinguish the disputed domain name from the Complainant’s mark (Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, WIPO Case No. D2004-1068; Advance Magazine Publishers, Inc. v. Aiyi Technologies Co., Ltd, WIPO Case No. D2003-0526; Advance Magazine Publishers, Inc. v. Models USA Inc., WIPO Case No. D2002-0907; Advance Magazine Publishers Inc. v. Marcellod Russo, WIPO Case No. D2001-1049).

In conclusion, the Panel finds that the Complainant has proven that the disputed domain name and the trademark of the Complainant are confusingly similar.

The Respondent does not contest this supposition.

The domain name must therefore be considered confusingly similar to the trademark “Vogue”. The Panel holds that the Complainant has established element (i) of the Policy’s paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent does not have any legitimate interest in the registration of the disputed domain name. The domain name does not appear to be in use for any bona fide offering of goods or services or to be prepared for such use, and there is no indication that the Respondent was known by the name “Vogue” prior to the registration of the domain name. The Respondent is not authorized or licensed to use the Complainant’s mark. There is no indication for a legitimate non-commercial or fair use of the domain name. These assertions are sufficient to satisfy Complainant’s obligation of making a prima facie showing that Respondent lacks a legitimate interest; the Respondent, by virtue of its default, has failed to rebut that showing.

Based on the case file, the Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith

Finally the Panel has to consider whether the disputed domain name was registered and used in “bad faith”.

The trademarks of the Complainant are registered in a number of countries and are used worldwide. The question is whether the Respondent has registered the domain name in bad faith, i.e. having the Complainant’s trademarks in mind and registering the domain name with the bad faith intention to profit from Complainant’s trademark. Although there is no direct evidence, the circumstantial evidence is more than sufficient to support the inference that Respondent probably was well aware of Complainant’s trademark at the time of registration. Among other things, the mark has been registered in the People’s Republic of China since 1929, and there are many “vogue” related web-sites that belong to Complainant and include content related to Complainant’s “Vogue” magazines. The Panel therefore finds it established that the domain name was registered in bad faith.

The more difficult question is this case is whether the domain name “is being used in bad faith” by the Respondent. The domain name <chinavogue.com> does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no evidence of positive action being undertaken by the Respondent in relation to the domain name.

However, as discussed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the relevant issue is not limited to whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.

The panel concluded in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003:

“This understanding of paragraph 4(a)(iii) is supported by the actual provisions of the Uniform Policy. Paragraph 4(b) of the Uniform Policy identifies, without limitation, circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, for the purposes of paragraph 4(a)(iii). Only one of these circumstances (paragraph 4(b)(iv)), by necessity, involves a positive action post-registration undertaken in relation to the domain name (using the name to attract custom to a web site or other on-line location). The other three circumstances contemplate either a positive action or inaction in relation to the domain name. That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trademark owner’s use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). Nevertheless, the point is that paragraph 4(b) recognizes that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” - that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”.

“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”.

The Panel has now to consider whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. The particular circumstances of this case are that:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent registered the domain name in 1999, and seams not to have been using the domain name,

(iv) the Respondent did not reply to the Complainant’s communications before the proceedings, and

(v) the Respondent did not reply to the Complainant’s contentions.

In light of these particular circumstances, the Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent.

7. Decision

The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. Accordingly, the Panel requires that the domain name <chinavogue.com> be transferred to the Complainant.

Anders Janson Presiding Panelist
David H. Bernstein Panelist	Yong Li Panelist

Dated: August 9, 2005