WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Domain Privacy, Domain Privacy ApS and Lorraine Jasper
Case No. D2017-1438
1. The Parties
Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America ("United States" or "U.S."), represented by Sabin Bermant & Gould, LLP, United States.
Respondents are Domain Privacy, Domain Privacy ApS of Copenhagen, Denmark and Lorraine Jasper of New York, New York, United States.1
2. The Domain Name and Registrar
The Disputed Domain Name <condenast-traveler.com> is registered with Ascio Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on August 2, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on August 8, 2017.
The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified Respondents of the Complaint, and the proceedings commenced on August 14, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2017. Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on September 6, 2017.
The Center appointed Richard W. Page, Neil A. Smith and John C. McElwaine as panelists in this matter on October 11, 2017. 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
Complainant notes that it is one of the world's most successful magazine publishers. Through its unincorporated division, Condé Nast, Complainant publishes such well-known magazines 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 websites incorporating content from many of its magazines.
Launched in 1987, Condé Nast Traveler is one of the world's most renowned travel magazines. Each month Condé Nast Traveler publishes information about fashion, vacation destinations, restaurants and hotels.
The U.S. edition of Condé Nast Traveler reaches an average monthly audience of over 809,980. In addition to the U.S. edition, a British version of Condé Nast Traveler is published in the United Kingdom of Great Britain and Northern Ireland and an Indian version is published in India.
In addition to its magazines, Complainant operates a website at <cntraveler.com>, the online home of U.S. Condé Nast Traveler. This website features magazine content, photos, hotel and restaurant profiles, trip plans, lifestyle and cultural information, as well as ads from third parties. The website "www.cntaveler.com" receives over 4.8 million unique visitors per month. In addition to the U.S. website, Complainant operates "www.cntraveller.com" in the UK and in India.
Complainant or its wholly owned subsidiaries own dozens of trademark registrations for CONDÉ NAST TRAVELER and variations of it (the "Condé Nast Marks"), in the U.S. and throughout the world. The Complainant has submitted a list of the Condé Nast Marks, including United States registration No. 2761342 CONDÉ NAST TRAVELER.
The Disputed Domain Name was registered on August 3, 2016.
On August 4, 2016, Complainant was made aware of Respondents' actions by a Public Relations Manager at Jimmy Choo, a shoe designer and retail business. This individual forwarded to Complainant's attention an email conversation between a person claiming to be Jeff Katz and herself, in which the email address appeared as "[email protected]" and signature line proclaimed that he or she was a "Men's Fashion Editor" at Condé Nast Traveler. The content of the email was a request for products.
On December 9, 2016, Complainant was made aware of Respondents' actions by an employee at L'Oréal. This individual forwarded to Complainant's attention an email conversation between a person claiming to be Jeff Katz and herself, in which the email address appeared as "[email protected]" and signature line proclaimed that he or she was a "Style Editor" at the publication. The content of the email was a request for products.
On January 13, 2017, Complainant was again made aware of Respondents' actions by a Communications Specialist at Canada Goose. This individual forwarded to Complainant's attention an email conversation between a person claiming to be Jeff Katz and herself, in which Respondents' email address appeared as "[email protected]" and signature line proclaimed that he or she was a "Fashion Coordinator" at the publication. The content of the email was a request for products.
On March 7, 2017, Complainant was again made aware of Respondents' actions by a Senior Account Executive at Negri Firman PR & Communication, who had been corresponding with a person claiming to be Jeff Katz. This individual emailed Complainant, questioning the authenticity of the email address, after she had lent Jeff Katz designer garments, assuming he or she was a legitimate employee of Complainant.
On February 13, 2017, Complainant's lawyers sent a cease-and-desist demand to the email address being used by the imposter "[email protected]", demanding that Respondents cease all further activity, and transfer the Disputed Domain Name to Complainant. No response to this letter has been received.
Further, Complainant's lawyers discovered that Respondents' WhoIs information revealed additional contact information. As such, on February 13, 2017, Complainant's lawyers sent a cease-and-desist demand to the registrant's email address "readingsbylorraine@[...].com", demanding that the registrant cease all further activity, and transfer ownership of the Disputed Domain Name to Complainant. Complainant has received no response. Since this letter, the WhoIs information was changed to what is reflected in the Amended Complaint. As such on July 17, 2017, Complainant's lawyers sent a cease-and-desist demand to registrant's email address "[…]@condenast-traveler.com" demanding that registrant cease all further activity, and transfer ownership of the Disputed Domain Name to Complainant. Complainant has received no response.
5. Parties' Contentions
A. Complainant
Complainant contends that the evidence provided shows that Respondents are attempting to steal valuable designer merchandise from designers and public relations firms, by posing as employees of Complainant's magazine. Respondents have requested various items for a fictional photo shoot, and then ask that the items be sent to a fictional stylist at a New York City address. In reality, the address is a hotel. As such, Respondents are able to retrieve stolen items with minimal scrutiny.
Complainant further contends that without any legitimate basis, Respondents have registered the Disputed Domain Name which consists of Complainant's identical trademarks CONDÉ NAST and CONDÉ NAST TRAVELER, with the only addition being a hyphen between "nast" and "traveler." Complainant further contends that it is clear that the registration of the Disputed Domain Name has caused and will continue to cause consumer confusion.
Complainant alleges that in view of its worldwide reputation and publication of international editions of Condé Nast Traveler magazine and Condé Nast Traveler websites, and ownership of Condé Nast Marks, consumers and associates who view the Disputed Domain Name will instantly recognize the Condé Nast Traveler brand and assume Complainant is somehow associated or connected with the activity. Moreover, anyone contacted by Respondents via the email address created with the bad faith intention of posing as a stylist for Condé Nast Traveler magazine, is very likely to assume the Disputed Domain Name is associated with Complainant. Complainant further alleges that the facts demonstrate numerous instances of actual confusion that have already resulted from use of the Disputed Domain Name. Complainant further alleges that the Disputed Domain Name is confusingly similar to the Condé Nast Marks.
Complainant avers that Respondents have no right or legitimate interests whatsoever with respect of the Disputed Domain Name. Complainant never granted Respondents the right to use or register the Condé Nast Marks, either in connection with a domain name registration or a bona fide offering of goods and services or for any other reason.
Complainant further avers that, pursuant to paragraph 4(b) of the Policy, Respondents registered the Disputed Domain Name for commercial gain, and to trade on Complainant's goodwill and reputation. Respondents clearly hope to generate revenue through its use of the Condé Nast Marks. Furthermore, by impersonating an editor, Respondents' actions constitute fraud, unfair and deceptive trade practices, and may violate criminal law. Complainant argues that for these reasons the Disputed Domain Name was registered and is being used in bad faith.
B. Respondents
Respondents did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Respondents are not obliged to participate in this proceeding, but when they fail to do so, asserted facts that are not unreasonable may be taken as true and Respondents would be subject to the inferences that flow naturally from the information provided by Complainant.
Even though Respondents have failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
See, section 4.3 of the WIPO Overview 3.0.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondents is identical or confusingly similar to a trademark in which Complainant has rights; and,
ii) that Respondents have 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
Complainant contends that it has registrations of the Condé Nast Marks, in the U.S. and in numerous other jurisdictions. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondents have the burden of refuting this presumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
Respondents have not contested the validity of the Condé Nast Marks.
Therefore, the Panel finds that Complainant has enforceable trademark rights for the purposes of this proceeding.
Complainant contends that the Disputed Domain Name is confusingly similar to the Condé Nast Marks pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that Respondents have registered the Disputed Domain Name which consists of Complainant's identical trademarks CONDÉ NAST and CONDÉ NAST TRAVELER, with the only addition being a hyphen between "nast" and "traveler."
Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark. See, Hoffmann-LaRoche AG v. P Martin,
WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,
WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,
WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,
WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,
WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,
WIPO Case No. D2008-0792.
The Panel finds that the entirety of the Condé Nast Marks is contained in the Disputed Domain Name and that the use of a hyphen in the Disputed Domain Name does not distinguish the Disputed Domain Name from Complainant's Condé Nast Marks.
Therefore, the Panel finds that Complainant has shown the necessary elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondents have no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondents, then Respondents carry the burden of demonstrating they have rights or legitimate interests in the Disputed Domain Name. Where Respondents fail to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondents have rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondents] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondents] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondents] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant avers it never granted Respondents the right to use or register the Condé Nast Marks, either in connection with a domain name registration or a bona fide offering of goods and services or for any other reason.
The Panel finds that Respondents have used the Disputed Domain Name to scam unsuspecting designers and ad agencies in New York out of merchandise. Such use in not a bona fide offering of goods or services or a legitimate noncommercial use.
In addition, the record contains no evidence that Respondents have been commonly known by the Disputed Domain Name.
Respondents have offered no explanation of their questionable actions.
Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that Respondents registered and are using the Disputed Domain Name in bad faith in violation of 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondents] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the Condé Nast Marks or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondents] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondents] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Condé Nast Marks as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product
Complainant alleges that, pursuant to paragraph 4(b) of the Policy, Respondents registered the Disputed Domain Name for commercial gain, and to trade on Complainant's goodwill and reputation. Respondents clearly hoped to generate revenue or to profit through its use of the Condé Nast Marks. Furthermore, by impersonating an editor and/or coordinator, Respondents' action constitutes fraud, fair and deceptive trade practices, and may violate criminal law. Complainant argues that for these reasons the Disputed Domain Name was registered and is being used in bad faith.
The Panel finds that such activity demonstrates the necessary elements of paragraph 4(b)(iv) of the Policy and that Complainant has satisfied the elements of paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <condenast-traveler.com> be transferred to Complainant.
Richard W. Page
Presiding Panelist
Neil A. Smith
Panelist
John C. McElwaine
Panelist
Date: October 24, 2017
1 The Amended Complaint identifies the potential Respondents as Domain Privacy, Domain Privacy ApS of Copenhagen, Denmark / Lorraine Jasper of New York, New York, United States, and Jeff Katz of New York, New York, United States. Section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states: "In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed." The Panel finds insufficient evidence that it has jurisdiction over Jeff Katz and hereby dismisses him from this proceeding. Therefore, "Respondents" shall hereafter refer to Domain Privacy, Domain Privacy ApS of Copenhagen, Denmark and Lorraine Jasper of New York, New York, United States. However, actions by Jeff Katz can be attributed to Respondents because of his representations on their behalf as described in paragraph 4 below and Respondents' failure to file a Response here, as described below.
