WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American Media, LLC d/b/a AMI Celebrity Publications LLC v. Dominic Reyes

Case No. D2019-2903

1. The Parties

Complainant is American Media, LLC d/b/a AMI Celebrity Publications LLC, United States of America (“United States”), internally represented.

Respondent is Dominic Reyes, United States.

2. The Domain Name and Registrar

The disputed domain name <usweekly-magazine.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 27, 2019.

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” 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 Respondent of the Complaint, and the proceedings commenced on November 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 19, 2019.

The Center appointed Robert A. Badgley as the sole panelist in this matter on December 27, 2019. The Panel finds that it was properly constituted. 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 has published a magazine called “US Weekly” since March 15, 2000. Complainant registered US WEEKLY as a trademark on December 5, 2000, with the United States Patent and Trademark Office (Reg. No. 2,410,772).

The Domain Name was registered on October 22, 2019. The Domain Name does not resolve to an active website. Rather, Respondent is using the Domain Name to impersonate Complainant’s Chief Content Officer, Dylan Howard. On November 15, 2019, Respondent sent emails, using the address
[...]@usweekly-magazine.com, to professional photographers. According to Complainant:

“The emails attempt to solicit photos from photographers, with the promise that the photos will be posted on US Weekly. As stated, this domain name nor this domain name owner have no affiliation with US Weekly or AM. In part, one of these emails provides: [‘]Hello Mark, I’m Chief Content Officer and editor at US Weekly magazine. I would like to learn more about your services. I am working on a new project for the new year and I’m compiling shots for US Weekly magazine ‘Featured Style’ segment and would love to collaborate with an experienced photographer on genre such as beauty, vintage, art, lifestyle, and outdoor.[’] The email sender then proceeds to sign off the email, [‘]Warm Regards, Dylan Howard.[’] As stated, this email was not sent from Dylan Howard, nor does Dylan Howard have control or access to this email address. As such, the domain name is clearly being used in bad faith, as it is being used to criminally impersonate Dylan Howard in an effort to make empty promises to photographers that their photos will be used in US Weekly.”

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark US WEEKLY through registration and use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to Complainant’s registered trademark. The Domain Name incorporates the entire mark and adds the word “magazine”, which describes the product sold by Complainant under the mark US WEEKLY, and does not prevent a finding of confusing similarity.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to explain why it registered the Domain Name. Based on the undisputed evidence in the record, Respondent is using the Domain Name to create a bogus email address and thereby impersonate Complainant’s Chief Content Officer to solicit something, presumably of value, from the email recipients. Such conduct is clearly illegitimate under the UDRP.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith under the above-quoted Policy paragraph 4(b)(iv). Respondent plainly has targeted Complainant’s US WEEKLY mark. It knows the name of Complainant’s Chief Content Officer. Bad faith use is manifest here. As noted above, Respondent is trying to impersonate Complainant’s Chief Content Officer in communications with professionals who might otherwise have dealings with Complainant. Respondent’s end game with the fake emails is not clear, but the mere act of impersonation in these circumstances amounts to bad faith, as it may be reasonably inferred that Respondent more likely than not has some sort of pecuniary aim.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <usweekly-magazine.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: December 27, 2019