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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Beroca Holdings B.V.I.
Case No. D2007-0026
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 Beroca Holdings B.V.I. Limited, Mayfair, London, United Kingdom
of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <condenast.mobi> is registered with EuroDNS
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2007. On January 10, 2007, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the domain name at issue. On January 17, 2007, EuroDNS S.A. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 29, 2007. 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 the Respondent of the Complaint, and the proceedings commenced on January 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2007.
The Center appointed Christopher J. Pibus, David H.
Bernstein and Andrew D. S. Lothian as panelists in this matter on March 14, 2007.
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
The Complainant, Advance Magazine Publishers Inc., d/b/a Conde Nast Publications, is one of the world’s leading magazine publishers and media companies. It publishes over 100 magazines and operates 60 web-sites in over twenty countries around the world.
The Complainant is identified as the owner of the registered mark CONDЙ NAST PUBLICATIONS, registered under United States Patent and Trademark Office Registration No. 3,102,717 for Publication of books and magazines. The Complainant indicates that it owns over 290 trademark applications and registrations worldwide which include the component CONDE NAST including CONDE NAST TRAVELER, CONDE NAST EASY LIVING, and CONDE NAST JOHANSENS. It also owns and operates the web-site <condenast.com>.
The disputed domain name was registered on September 26, 2006.
In November 2006, Complainant became aware of the registration and use of <condenast.mobi>
when the Respondent’s representatives contacted Complainant’s legal
counsel asking if Complainant wished to purchase the domain name. Complainant’s
counsel responded by demanding transfer of the < condenast.mobi> domain
name. On December 6, 2006, the Respondents requested Ј5,000 by way of payment
for the transfer. Complainant’s counsel then offered to reimburse Respondent
for the cost of registration. On December 7, 2006, Respondent offered to transfer
the domain for $5,000.
5. Parties’ Contentions
The Complainant’s submission can be summarized as follows:
(i) The domain name <condenast.mobi> is identical to Complainant’s trademark CONDE NAST.
(ii) The Respondent has no rights or legitimate interests in the domain name. The Respondent has no rights to any trademark consisting of CONDE NAST in any country.
(iii) The domain name was registered and is being used in bad faith. Complainant points to the conduct of the Respondent as evidence that (i) it has no rights or interest in the domain name and (ii) it acquired the registration in bad faith. Complainant submits that the Respondent is using the disputed domain name for its commercial activities with the intention of attracting financial gain or alternatively disrupting the business of Complainant. Complainant further submits that the Respondent’s bad faith is clearly evidenced by its (i) refusal to voluntarily transfer the domain name for its out of pocket costs after being placed on notice of Complainant’s rights in the mark and (ii) its demand of Ј5,000 or $5,000 to transfer the domain name.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its rights in the CONDE NAST trade-mark, by virtue of the large number of registrations it has obtained worldwide, in which the words Conde Nast appear as the distinctive elements.
The Panel finds that the disputed domain name is confusingly similar to the CONDE NAST trade-mark, as it replicates the distinctive elements of the Complainant’s mark.
The Panel, therefore, finds that Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
There is no evidence that the Respondent ever had any legitimate right or interest in the <condenast.mobi> domain name. The Respondent is not using the domain name in connection with a bona fide offering of goods or services. Complainant submits rather that Respondent operates a skeletal website which contains “pay-per-click” links to a magazine subscription web-site for its own commercial gain.
Consistent with Auto-C, LLC v. MustNeed.com, WIPO
Case No. D2004-0025, the Panel finds that a prima facie showing has
been made that the Respondent lacks rights or legitimate interests in the disputed
domain name. Once a complainant makes this prima facie showing, the respondent
must come forward with evidence that rebuts this presumption (Document Technologies,
Inc. v. International Electronic Communications Inc., WIPO
Case No. D2000-0270).
As no evidence has been furnished by Respondent, the Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees on the available record with the Complainant’s contention that the Respondent has registered and is using the domain name in bad faith within the meaning of the Policy.
The uncontested evidence shows the Complainant’s mark CONDE NAST has a strong reputation and is widely known. In the circumstances, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant and its rights in the CONDE NAST trade-mark when registering the domain name at issue.
It also seems clear that Respondent registered the domain name for the purposes
of selling it or transferring it to Complainant for valuable consideration in
excess of out-of-pocket costs. The fact that Respondent contacted Complainant
offering to sell the domain name shortly after its registration is indicative
of this. Furthermore, although Complainant offered to pay for the cost of registration,
the Respondent sought much higher amounts (payment of Ј5,000 or $5,000). Respondent’s
conduct constitutes flagrant cybersquatting, and the Policy is clearly directed
to correcting this sort of misconduct. (See Cf Freddy Adu. v. Frank Fushille,
WIPO Case No. D2004-0682 – “The
most offensive act of a cybersquatter is to hold another’s mark for ransom.”)
The Panel, therefore, finds that Complainant has satisfied the third requirement
of paragraph 4(a) of the Policy.
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 <condenast.mobi> be transferred to the Complainant.
Christopher J. Pibus
David H. Bernstein
Andrew D. S. Lothian
Dated: March 28, 2007