Advance Magazine Publishers Inc., and Conde Nast Asia/Pacific, Inc. v. Ming Hsun Lin [2005] GENDND 2086 (27 December 2005)

	Home \| Databases \| WorldLII \| Search \| Feedback Generic Top Level Domain Name (gTLD) Decisions

Advance Magazine Publishers Inc., and Conde Nast Asia/Pacific, Inc. v. Ming Hsun Lin

Case No. D2005-1106

The Complainants are Advance Magazine Publishers Inc. and Conde Nast Asia/Pacific, Inc., of New York, United States of America, represented by Sabin Bermant & Gould, LLP, New York, New York, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2005. On October 24, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 24, 2005, 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 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 October 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2005.

The Center appointed Adam Taylor, David H. Bernstein and C. K. Kwong as panelists in this matter on December 14, 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.

The First Complainant Advance Magazine Publishers Inc., is an international magazine publisher. The Second Complainant is a subsidiary of the First Complainant. The Complainants’ group publishes such well-known magazines as Vogue, Glamour, The New Yorker, Self, Vanity Fair and GQ.

Vogue, a fashion and style magazine for women, was launched in 1892. The United States edition reaches an average monthly audience of over 1,275,000. In addition to the United States edition, Vogue is published through the group’s subsidiaries or local licensees in the following countries: England, France, Germany, Spain, Brazil, Italy, Greece, Portugal, Russia, Korea, Japan, Australia, Latin America, China and Taiwan, Province of China.

The Complainants’ group owns over 1,000 trademark registrations for VOGUE in connection with magazines and online publications and distribution of information worldwide. These include the First Complainant’s United States trademark no. 103,770 for the word VOGUE dated April 13, 1915.

Since 1996, the Complainants’ licensee Conde Nast China has published Vogue in Taiwan, Province of China, where monthly circulation averages 65,000.

The Complainants’ group has, for many years, published various offshoots of Vogue in different countries, including a men’s version of Vogue in Italy titled L’Uomo Vogue since 1968, as well as Manner Vogue in Germany and Vogue Hommes International in France.

From early November 2004, news media began reporting on Complainants’ plans to officially launch a men’s version of Vogue in the United States.

In May 2005, the Complainants’ Taiwanese counsel contacted the Respondent by telephone and advised him of Complainants’ worldwide trademark rights and concerns about possible confusion surrounding his registration and any planned use of the disputed domain name. Counsel said that consumers would automatically assume that the Complainants, not the Respondent, operated any site using the disputed domain name, especially in view of Complainants’ publication of numerous Vogue magazines worldwide and well-publicized plans to launch the Men’s Vogue magazine in the United States in September 2005.

The Respondent stated that he disagreed with that assessment of the Complainants’ rights but that he would be willing to transfer the domain name to Complainant for “reasonable compensation”. The Complainants’ counsel said that the Complainants would be willing to pay a nominal amount in order to avoid lengthy legal proceedings. The Respondent responded that he would be willing to transfer the disputed domain name for a price of US$600,000 to US$1 million dollars.

In an August 16, 2005 email, the Respondent stated “Regarding the matter of transferring mensvogue.com to Conde Nast Asia/Pacific Inc., I am willing to accept US$600,000 to US$1,000,000 for the transfer of the domain name.” (The Complainants’ translation from Chinese says “I am willing to accept the transfer proposal in the amount …” The Panel considers that this translation is not completely correct and, for the record, it does not treat the Respondent as claiming that it was accepting an offer by the Complainants to buy the disputed domain name for US$600,000 to US$1,000,000.)

The Complainants launched Men’s Vogue magazine in the United States in September 2005.

Without any legitimate basis, the Respondent has registered a domain name which consists of the Complainants’ trademarks VOGUE and MENS VOGUE. Registration of the disputed domain name will lead to consumer confusion.

In view of the Complainants’ worldwide reputation and publication of numerous international editions of Vogue magazine, offshoots of Vogue targeted to men and teens and most recently Men’s Vogue magazine in the United States, consumers who view the disputed domain name will instantly recognize the VOGUE brand and assume that it links to a website for a Vogue magazine published by the Complainants.

Accordingly, the disputed domain name is confusingly similar to Complainants’ trademarks.

The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainants never granted Respondent the right to use or register the VOGUE mark.

Prior to its registration of the disputed domain name, the Respondent had no legitimate use or right to use the VOGUE brand.

The Respondent has not revealed any legitimate business plan or specific proposed use for the domain name.

The Respondent registered the disputed domain name for the purpose of selling the name to the Complainants for significant profit. The Respondent was also aware that consumers would expect to see a website associated with Complainants’ magazines at the disputed domain name. This is underscored by the fact that the Complainant publishes several variants of Vogue magazine including a magazine under a title identical to the disputed domain name. Therefore, there is no doubt that the disputed domain name was registered in bad faith.

The Complainants have established extensive registered trademark rights in the term VOGUE as well as unregistered rights deriving from widespread use of that name for over a century.

The disputed domain name includes the Complainants’ trademark in its entirety, together with the generic word “mens”. This additional generic term fails to dispel the connection between the domain name and the trademark; indeed it reinforces the link as the average person is likely to think that the domain name refers to a men’s edition of the Complainants’ well-known women’s magazine - whether or not such person is aware that the Complainants do in fact publish some men’s editions.

It is well-established that domain suffixes are disregarded for the purpose of this comparison.

The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.

The Complainants must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainants have not licensed or otherwise authorized the Respondent to use their trademark.

As to paragraph 4(c)(i) of the Policy, there is no evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.

The Complainants have established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

When approached by the Complainants, the Respondent offered to sell the disputed domain name for the grossly excessive price of US$600,000 to US$1,000,000. In light of this, as well as the lack of any (let alone any genuine and plausible) explanation for registration of the disputed domain name including the Complainants’ well-known and distinctive trademark, the Panel is satisfied that paragraph 4(b)(i) of the Policy applies. The Respondent registered the domain name primarily for the purpose of selling it to the Complainants for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.

The Panel concludes that the disputed domain name was registered and has been used in bad faith.

The Panel wishes to make clear that, in reaching this decision, it has placed no weight on the publicity surrounding, and recent launch of, Men’s Vogue in the United States as all of this post-dated registration of the disputed domain name.

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 <mensvogue.com> be transferred to the Complainant.

Adam Taylor
Presiding Panelist

David H. Bernstein
Panelist

C. K. Kwong
Panelist

Generic Top Level Domain Name (gTLD) Decisions

Advance Magazine Publishers Inc., and Conde Nast Asia/Pacific, Inc. v. Ming Hsun Lin [2005] GENDND 2086 (27 December 2005)

World Intellectual Property Organization