A small Indian travel agency fought back Advance Magazine Publishers Inc., and won.
The publishers of Vogue magazine filed a UDRP to get the domain VogueTravels.com from its Indian registrant. The VOGUE mark is world famous and the Complainant used that in their argument, indicating that they also operate from Vogue.in in India, alongside Vogue.com internationally.
The Respondent asserts to have rights and legitimate interests in the disputed domain name, since the Partnership firm “Vogue Travel” was commonly known in India since September 2005 and the website at the disputed domain name was active from mid-2006 till 2020. They acknowledged the Complainant’s VOGUE mark but pointed out the different services it protects, unrelated to what the Respondent offers.
The sole panelist at the WIPO found no bad faith registration or use of the domain:
The Panel finds that there is no evidence suggesting that the Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy: this Panel is not a court to decide upon civil disputes or trademark infringement, as the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”.
The panelist declined to deliver a finding of Reverse Domain Name Hijacking but ordered the domain VogueTravels.com to remain with the Respondent.
The domain transfer was denied.
Advance Magazine Publishers Inc. v. Domain Admin, Privacy Protect, LLC (Privacy Protect.org) / Tarun Suri
Case No. D2021-29231. The Parties
The Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented by Rahul Chaudhry & Partners, India.
The Respondent is Domain Admin,Privacy Protect, LLC (Privacy Protect.org), United States / Tarun Suri, India, represented by Cylaw Solutions, India.
2. The Domain Name and Registrar
The disputed domain name <voguetravels.com> 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 September 6, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2021, 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 September 21, 2021 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 amended Complaint on September 22, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent requested additional days to file its Response. The Center granted an extension of the due date to submit the response until October 31, 2021. The Response was filed with the Center on October 31, 2021.
The Center appointed Edoardo Fano as the sole panelist in this matter on November 22, 2021. 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Advance Magazine Publishers Inc., a United States company operating in the field of publications and owning several trademark registrations for VOGUE, some of them in the name of its unincorporated division The Condé Nast Publications Inc., among which:
– United States Trademark Registration No. 71112351 for VOGUE, registered on May 20, 1919;
– International Trademark Registration No. 158005 for VOGUE, registered on December 3, 1951;
– Indian Trademark Registration No. 1302833 for VOGUE, registered on August 16, 2004.
The Complainant operates on the Internet at the main website “www.vogue.com”, as well as with many other generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) for the trademark VOGUE, including <vogue.in>, some of them in the name of its unincorporated division The Condé Nast Publications Inc.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain name was registered on December 19, 2005 and it is currently resolving to an error page. However, the disputed domain name has been previously used for a website offering travel agency services.
On June 19, 2019, the Complainant’s legal representatives sent a cease-and-desist letter to the Respondent, followed by a reminder on July 4, 2019, without receiving any reply.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain name <voguetravels.com> is confusingly similar to its trademark VOGUE, as the disputed domain name wholly contains the Complainant’s trademark with the addition of the generic term “travels”.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, since it was registered with the only purpose of disrupting the business of the Complainant and attracting Internet users for commercial gain by creating confusion with the Complainant’s trademark.
B. Respondent
The Respondent submits that “Vogue Travel” is its Indian Partnership firm formed on September 10, 2005 and formally registered with the Delhi Registrar of Firms on November 10, 2014 (Annex II(a) of the Response), providing travel agency services since 2005, also through Internet by means of the website at the disputed domain name.
The Respondent acknowledges that the disputed domain name is confusingly similar to the Complainant’s trademark VOGUE, but it states that the dictionary term “vogue” was chosen for its meaning of “fashion” and “style”, as the Complainant and many other companies have done in different fields.
The Respondent asserts to have rights and legitimate interests in the disputed domain name, since the Partnership firm “Vogue Travel” was commonly known in India since September 2005 and the website at the disputed domain name was active from mid-2006 till 2020.
Finally, the Respondent states that the disputed domain name was not registered in bad faith, but instead for its common generic meaning, while the Complainant’s trademark VOGUE entered the Indian market in 2007 and the Complainant’s websites “www.vogue.in” and “www.vogue.com” were not active until respectively 2007 and 2009, and therefore the Respondent could not be aware of the Complainant and its trademark at the time of the registration of the disputed domain name. As regards the use in bad faith of the disputed domain name, the Respondent asserts that its 14 years’ use of the website at the disputed domain name as a travel agency cannot be considered bad faith use, while the actual non use of the disputed domain name is due to the difficult situation of the tourism sector because of Covid 19.
Furthermore, the Respondent adds that the Complaint should be barred by the doctrine of laches, since the Complainant waited 15 years to initiate these proceedings, and considers the Complaint to be filed in bad faith on the part of the Complainant, as Reverse Domain Name Hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant is the owner of the trademark VOGUE both by registration and acquired reputation and that the disputed domain name <voguetravels.com> is confusingly similar to the trademark VOGUE.
Regarding the addition of the term “travels”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the term “travels” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.
The Panel finds that the Complainant has, therefore, met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:
“(i) before any notice to you 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 (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 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.”
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is always more complicate than establishing a positive one.
As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The disputed domain name is currently redirecting to an error page and was previously used in connection to a website offering travel agency services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
As mentioned above, the Respondent claimed to have registered the disputed domain name for its inherent value as a common word domain name with different possible references – including “fashion” and “style” – and pointed it to a webpage offering travel agency services.
As stated in section 2.10.1 of the WIPO Overview 3.0, “merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. (…) Panels have assessed cases involving common phrases (whether spelled out or numerical) corresponding in whole or in part to numbers (e.g., 24/7 or 365) in a similar manner as dictionary terms. Panels also tend to look at factors such as the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning”.
The Panel notes that, according to the Delhi Registrar of Firms, the Respondent’s Indian Partnership firm “Vogue Travel” was formed on September 10, 2005 and formally registered on November 10, 2014 (Annex II(a) of the Response), and that the Respondent has been using a name corresponding to the disputed domain name, as further proved by several Facebook and Twitter posts (Annex IX(a)(b) of the Response).
As regards the past use of the disputed domain name, currently redirecting to an error page, the Panel finds that, according to the Wayback Machine pages (“www.archive.org”) provided by the Respondent (Annex III of the Response), some of them also reproduced in the Complainant’s cease-and-desist letter sent to the Respondent (Annex P of the Complaint), the disputed domain name has been used in connection with what appears to be a bona fide offering of travel agency services before any notice of the current dispute, promoting the Respondent’s own business without intending to trade off or exploit the Complainant’s trademark, which appears to be well known in a different field.
In light of the above, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to succeed, the Complainant must establish that all three elements of the Policy are present cumulatively, and the Panel has already found that the Respondent does have rights or legitimate interests in respect of the disputed domain name.
Even though it is not therefore necessary to proceed to determine bad faith registration and use of the disputed domain name, the Panel deems that the Complainant’s unsupported assertion that “the Respondent registered the Disputed Domain Name to make unauthorized use of the Complainant’s goodwill and reputation for his own personal and commercial purposes and to disrupt the business of the Complainant under its mark VOGUE” would not meet its burden of proof on this third element either.
The Panel finds that there is no evidence suggesting that the Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy: this Panel is not a court to decide upon civil disputes or trademark infringement, as the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”.
The Respondent was using the disputed domain name in the field of tourism, and the logo and layout used by the Respondent in respect of its Partnership firm name “Vogue Travels” in the website at the disputed domain name were completely different to those of the Complainant’s trademark VOGUE. While the Panel is aware of the extended use of the Complainant’s trademark VOGUE, the Panel finds that the evidence submitted by the Complainant is not sufficient to conclude that the Respondent registered the disputed domain name in bad faith.
The Panel therefore finds that that the Complainant has failed to prove that the disputed domain name has been registered and is being used in bad faith, according with paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
The Respondent states that the Complainant in engaging in Reverse Domain Name Hijacking.
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, it should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).
The Panel is not persuaded that the circumstances of the present case justify a finding of Reverse Domain Name Hijacking. On balance, the Panel does not deem it appropriate to issue such a finding since due weight must be given to the Complainant’s trademark rights as well as to the nature of the disputed domain name and the inferences that can be drawn from those aspects. Moreover, on the one hand the supposed notoriety of the Complainant’s trademark VOGUE in India at the time of the disputed domain name registration was not adequately proved and the present Complaint was filed only when the Respondent’s bona fide offering of travel agency services had stopped; on the other hand, the evidence as a whole is open to the interpretation that the Complainant was motivated by a desire to protect its trademark rather than to harass the Respondent, trying to settle the question before filing the present Complaint by sending a cease-and-desist letter that remained unanswered by the Respondent.
The Panel therefore declines to find that the Complainant has acted in bad faith and does not issue a finding of Reverse Domain Name Hijacking.
7. Decision
For the foregoing reasons, the Complaint is denied.
Edoardo Fano
Sole Panelist
Date: November 26, 2021
