Advance Magazine Publishers Inc. v. Red Wagon Films
Case No. D2006-0893
1. The Parties
The Complainant is Advance Magazine Publishers Inc., New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
The Respondent is Red Wagon Films, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <condenastonline.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2006. On July 14, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 17, 2006, Go Daddy Software transmitted by email to the Center its verification response. The response indicated that the registrant of record, Red Wagon Films, was not the entity originally specified in the Complaint as the Respondent.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 21, 2006. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2006.
The Center appointed Jeffrey M. Samuels, David H. Bernstein and David E. Wagoner as panelists in this matter on September 27, 2006. 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.
Upon review of the record, the Panel noted that there appeared to be some difficulty in delivering the hard copy of the Complaint and Amended Complaint to Respondent. Ultimately, the courier service utilized by the Center for delivery of the Complaint and Amended Complaint to Respondent returned the documents to the Center on or about October 18, 2006.
The Panel further observed that Complainant, in support of its assertion of “bad faith” registration and use, contended that Respondent used the disputed domain name in emails that were sent to employees of Complainant asking for tickets and entry into exclusive events. However, the emails were not attached to the Complaint or Amended Complaint.
In view of the above, the Panel issued Administrative Order No. 1 on October 18, 2006. The order withdrew the August 17, 2006 “Notification of Respondent Default” and required Complainant to submit copies of the above-referenced emails to the Center by October 27, 2006. Thereafter, the Center was directed to issue a new “Notification of Complaint and Commencement of Administrative Proceedings” and to forward such Notification, along with the Complaint, the Amended Complaint, and any emails submitted in support of the assertion of “bad faith” registration and use, to Respondent in a manner to assure delivery to its post office address.
Complainant timely filed the requested emails. Respondent was properly notified of the proceeding. On November 16, 2006, the Center issued a “Notification of Respondent Default”.
4. Factual Background
Complainant, Advance Magazine Publishers, Inc., d/b/a Conde Nast Publication, has used the name and mark CONDE NAST in connection with various magazines sold in 20 markets across the globe. Complainant owns U.S. Trademark Registration No. 3102717 for the mark CONDE NAST PUBLICATIONS and owns over 290 trademark applications and registrations worldwide that incorporate the mark CONDE NAST. See Annex E to Complaint.
In April 2006, Complainant became aware of the registration and use of the domain name <condenastonline.com> when representatives of the registrant used the domain name in emails sent to Complainant’s employees requesting tickets and entry into certain events. On May 12, 2006, Complainant’s counsel sent an email to all email addresses it could find relating to <condenasteonline.com> demanding that the name be transferred to Complainant. See Annex F to Complaint. On May 16, 2006, Complainant’s counsel sent a follow-up email and received a response stating that “we have no idea what you’re talking about.” See Annex G to Complaint.
5. Parties’ Contentions
A. Complainant
Complainant points out that Respondent has registered a domain name which consists of Complainant’s mark CONDE NAST and the generic word “online”. It further maintains that “[t]here is no doubt that the registration of the disputed domain name has led to consumer confusion”. According to Complainant, consumers who view the disputed domain name will instantly recognize the CONDE NAST mark and assume that the domain name links to a website published by Complainant.
Complainant maintains that Respondent has no rights or legitimate interests in the domain name. It notes that it never granted Respondent the right to use or register the CONDE NAST mark, either in connection with a domain name registration or a bona fide offering of goods or services, and contends that, prior to registration of the disputed domain name, Respondent had no legitimate use or right to use the CONDE NAST mark.
With respect to the issue of “bad faith” registration and use, Complainant argues that the facts of this case “clearly demonstrate” that Respondent registered the disputed domain name for commercial gain and to trade on Complainant’s goodwill. “Respondent was clearly aware that consumers who view the disputed domain and e-mail addresses which contain the domain name will expect to be linked to a website associated with Complainant’s business and would expect all e-mail addresses utilizing the domain name to be authorized by Conde Nast. Instead, Respondent is using the domain name to fraudulently obtain valuable information and access to expensive and exclusive events for his/her own commercial gain and to the detriment of Complainant and Complainant’s reputation and goodwill.”
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name, <condenastonline.com>, is confusingly similar to the mark CONDE NAST. The domain name incorporates the mark in its entirety and merely adds the descriptive and generic terms “online” and “.com” to such name.
The Panel further finds that Complainant, through its use of, and registrations covering, the CONDE NAST mark, has rights in the mark.
B. Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the domain name. By virtue of its failure to submit a Response, Respondent has not rebutted the prima facie case.
C. Registered and Used in Bad Faith
The Panel has reviewed the website at “www.condenasteonline.com”. It consists, in part, of sponsored links relating to travel and magazines with which the CONDE NAST mark is associated. The Panel concludes that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services at such site, within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further determines that Respondent’s use of the disputed domain name in emails suggesting an affiliation with Complainant is itself bad faith.
Thus, the Panel finds that the disputed domain name was registered and is being used in “bad faith”.
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 <condenastonline.com> be transferred to Complainant.
Jeffrey M. Samuels Presiding Panelist
David H. Bernstein Panelist
David E. Wagoner Panelist
Dated: November 17, 2006
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