WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American Media, LLC d/b/a AMI Celebrity Publications LLC v. Mos Fila

Case No. D2020-1831

1. The Parties

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

The Respondent is Mos Fila, United States.

2. The Domain Name and Registrar

The disputed domain name <lifeandstylemags.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 14, 2020, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 29, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on August 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2020.

The Center appointed Lynda M. Braun as the sole panelist in this matter on September 16, 2020. 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

The Complainant is the owner and successor-in-interest¹ of the LIFE & STYLE trademark, United States Registration No. 4070442, registered on December 13, 2011 in international class 16 (hereinafter the “LIFE & STYLE Mark”). The Complainant also owns the domain name <lifeandstylemag.com>, which resolves to the Complainant’s official website at “www.lifeandstylemag.com”.

The Disputed Domain Name was registered on July 4, 2020 and resolves to a website that impersonates and is identical to the Complainant’s official website. In addition, the Respondent used the Disputed Domain Name to send emails to professional photographers, fraudulently attempting to create the impression that such emails originated from the Complainant’s Photo Editor. The emails were sent by using the Disputed Domain Name from “@lifeandstylemags.com” (for example, “[...]@lifeandstylemags.com”), and sought to impersonate the Complainant’s Photo Editor in an attempt to fraudulently engage unsuspecting photographers into thinking they were entering into a commercial relationship with the Complainant. In the emails, the impersonator attempts to solicit photographs from professional photographers with the promise that the photographs would be featured in the Complainant’s Life & Style magazine. An example of one of the emails is set forth below:

“Hi Stephanie,
I’m compiling short promotional photo shoot for lifeandstylemags.com “Fashion & Beauty" page segment and the online fashion magazine is looking for professional and reliable photographers who want to create stunning pictures to feature on all our website and magazine.

If you’re interested in this project, it is important to understand few details about the project. These are:

You will be required to work with a male and a female model.
There will be 3 outfits per model.

- We want 4 professionally taken picture of each outfit.(12 per model, which is 24 images in total)
- Outfits/Wardrobe will be supplied by us.
- Location, date, and time will be fixed by you.
- Delivery date: September 28th, 2020.( If for some reasons COVID 19 issues still persist. We are flexible)
- Compensation: 2,800 (800 upfront and 2,000 final payment).
- You will hold full image right (Licensor)

As the photographer we want you to handle other aspect of the gig, write creative storyboard and dictate the creative direction. If you can handle this, please reply with your full name/Business name (to be written on your payment and contract), phone number, and address. I will forward a contract to be signed by both parties.

Regards,
AMI Photo Editor”

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the LIFE & STYLE Mark.

It is uncontroverted that the Complainant has established rights in the LIFE & STYLE Mark based on its years of use as well as its registered trademark for the LIFE & STYLE Mark in the United States, where the Respondent is located. The general rule is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the LIFE & STYLE Mark.

The Disputed Domain Name <lifeandstylemags.com> consists of the LIFE & STYLE Mark (with the ampersand replaced with the conjunction “and”) followed by the term “mags”, a common abbreviation for the dictionary term “magazines”, and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or abbreviation. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923. Specifically, the addition of the abbreviation “mags” does not prevent a finding of confusing similarity under the first element. See Areva v. St. James Robyn Lioges, WIPO Case No. D2010-1017. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.²

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s LIFE & STYLE Mark.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its LIFE & STYLE Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name to resolve to a website that is identical to the Complainant’s official site. In addition, the Respondent is using the Disputed Domain Name for a fraudulent purpose and for commercial gain. The Respondent registered the Disputed Domain Name in an attempt to appear associated or affiliated with the Complainant’s Photo Editor and to use the emails it created from the Disputed Domain Name in connection with a phishing scheme. Thus, the Respondent did not use or have an intention to use the Disputed Domain Name in connection with a bonafide offering of goods or services and has no rights or legitimate interests in the Disputed Domain Name.

Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Disputed Domain Name was registered long after the Complainant first began using its LIFE & STYLE Mark. The Panel finds it likely that the Respondent had the Complainant’s LIFE & STYLE Mark in mind when registering the Disputed Domain Name, demonstrating bad faith.

In this case, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Name. By sending fraudulent emails and impersonating one of the Complainant’s employees, it is evident that the Respondent had knowledge of the Complainant, its business, and its LIFE & STYLE Mark when creating the Disputed Domain Name. In light of the circumstances in this case, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s LIFE & STYLE Mark at the time the Disputed Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Second, as demonstrated above, the Respondent is using the Disputed Domain Name to perpetrate an impersonation scheme aimed at defrauding unwitting third parties. “As noted in section 2.13.1 [of WIPO Overview 3.0], given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” WIPO Overview 3.0, section 3.1.4. The Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed against the Complainant, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails purporting to come from the Complainant’s Photo Editor to offer photographers the opportunity to do a photo shoot that would appear in the Complainant’s magazine, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s LIFE & STYLE Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See also Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith).

Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of bad faith. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s LIFE & STYLE Mark in connection with a phishing scheme.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <lifeandstylemags.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: September 30, 2020

¹ The LIFE & STYLE Mark was assigned from Bauer Publishing Company, L.P. to the Complainant on July 1, 2018.

² In addition, the Disputed Domain Name is almost identical to the Complainant’s domain name, <lifeandstylemag.com>, with the exception of the extra “s” in “mags” in the Disputed Domain Name.