In one of the more interesting UDRP decision of the year the publisher of Vogue Magazine, Advance Magazine Publishers Inc. of New York, lost a UDRP on the domain VogueFashionModels.com which is owned by Premier Models International Inc of New York.
The three member UDRP had a split decision with two panelist voting to deny the complaint and one voting to transfer the domain to the trademark holder.
Here is the kicker the Domain holder didn’t even respond to the complaint.
Not only did the dissenting panelist, David M. Kelly, file a dissenting opinion, he filed a complete UDRP decision from his point of view.
I’m not sure I have ever seen a dissenting panelist file a separate UDRP decision so I publish his decision below the main decision in full.
Here are the relevant facts and finding by the majority of the three member panel:
“Complainant publishes Vogue fashion magazine which launched in 1892.”
“The U.S. edition of Vogue reaches an average monthly audience of 1,315,304.”
In addition to its magazine, Complainant operates Vogue.com
“Vogue.com” receives over 2 million unique users per month.
Complainant and/or its wholly owned subsidiaries own over 500 trademark registrations for VOGUE and variations of “Vogue”. Some of these registrations are:
U.S. Registration No. 1336659, Registered May 21, 1985 for the trademark VOGUE for a “magazine”;
U.S. Registration No. 103770, Registered April 13, 1915 for the trademark VOGUE for “patterns”;
U.K., Registration No. 2226466, registered November 17, 2000 for various goods and services in classes 16, 35, 36 and 38 for the trademark VOGUE; and
On October 12, 2012, Complainant received an email from a concerned parent of a 19 year old girl being recruited by Vogue Fashion Inc. who was attempting to discover whether any relationship existed between Complainant and Respondent.
On October 15, 2012, Complainant’s lawyers sent an email to the email address listed in the WhoIs registration. On October 15, 2012, a representative from Vogue Fashion Models Inc. responded, stating:
We are not using the name Vogue Magazine, the dba for this company is Vogue Fashion Models, Inc.
Our attorneys advised us that there is no relation with Vogue Magazine, so there should be no issue.
Our customers are aware of this. We will cease and desist from using this name until this is looked unto further and reverified.
We have no desire to use this name if its in fact gives anyone the impression we are Vogue Magazine.
A. Identical or Confusingly Similar
The disputed domain name incorporates Complainant’s trademark and differs from Complainant’s registered VOGUE mark only by adding non-distinctive phrase “fashion model.” Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.
Complainant satisfies paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In view of Respondent’s default, the Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, Respondent has not rebutted such a prima facie showing and therefore Complainant has succeeded with respect to this Policy element.
C. Bad Faith Registration and Use
Complainant alleges bad faith registration as follows:
The facts of this case demonstrate that Respondent registered the disputed domain name for commercial gain and to trade on Complainant’s goodwill and reputation.
Knowing the association Vogue Magazine has with premiere modeling, Respondent lures young, aspiring models through its use of the Vogue brand.
In addition, Respondent has shown a willingness to refer to “www.vogue.com” in a fashion that suggests an affiliation. For these reasons, there is no doubt that the disputed domain name was registered in bad faith.
Respondent has not denied the allegation that “knowing the association Vogue Magazine has with premiere modeling; Respondent lures young, aspiring models through its use of the Vogue brand.” However, the evidence Complainant offers in support of its contention contradicts, or at least undermines, its allegations. Specifically, Respondent’s response Complainant’s cease-and-desist letter states:
We are not using the name Vogue Magazine, the dba for this company is Vogue Fashion Models, Inc.
Our attorneys advised us that there is no relation with Vogue Magazine, so there should be no issue.
Our customers are aware of this.
We will cease and desist from using this name until this is looked unto further and reverified.
We have no desire to use this name if it’s in fact gives anyone the impression we are Vogue Magazine.
Complainant makes no allegations that challenge or contradict Respondent’s assertion that it relied on advice of counsel when selecting its name.
Complainant is silent on the point.
Evidence that a party relied on advice of counsel when registering a domain name is relevant when deciding whether the respondent acted in bad faith.
However, where a party asserts advice of counsel as a defense to bad faith, it is not too much to require at least a response to the complaint, if not supporting evidence such as a declaration or a copy of the opinion of counsel.
Failing to require at least a response to the complaint and evidence (such as a sworn declaration) supporting the claim of reliance would risk enabling a respondent to improve its procedural position by defaulting, thereby avoiding any testing of the claim of reliance.
Consequently, while the Majority would recognize reliance on advice of counsel as a valid defense to an allegation of bad faith registration or use, it is not willing to credit this defense on this record, where Respondent has defaulted and thereby failed to substantiate its claim of reliance on advice of counsel.
But just as we are procedurally strict with Respondent, so too must we be strict with Complainant.
The Complaint here does not allege bad faith use of the disputed domain name, but instead alleges only bad faith registration; consequently Respondent’s default triggers no adverse inferences regarding the required bad faith use element.
Complainant leaves it to the Panel to search the record for evidence of bad faith use.
The Majority is frustrated in this search.
There is no evidence in the record about whether or how Respondent uses the disputed domain name in association with a website.
Complainant attaches no annex with a copy of Respondent’s website to show how it is (or was) used, either before or after Complainant sent its cease and desist letter.
As a result, the Panel has no direct evidence about the content of any webpage associated with the disputed domain name.
What’s more, the indirect evidence indicates that Respondent’s website, whatever its content, played no role in the instance of confusion reflected in the email exchange.
The aspiring model’s email exchange that is of record recites that she was led to Respondent by virtue of a posting on a third party site at exploringtalent.com”for an opportunity to audition for a modeling assignment for a Donna Karen’s winter catalogue project.
There is no evidence in the record about the content of this third party site and, consequently, no evidence that it displayed the disputed domain name in any way (as a website URL or email address) or that the disputed domain name played in any role in the ingénue’s initial interest in the Donna Karen audition as it was advertised on the third party site. Indeed, quite to the contrary, the ingénue’s skeptical father, who apprised Complainant of his daughter’s communications with Respondent, reported that “They have no website. They claim Vogue.com as their website.”
As far as this record reflects, the only evidence of any use of the disputed domain name is its appearance in the email address “info@voguefashionmodels.com” that Respondent’s representative used when corresponding with the inquiring model. When she saw that the contract proposed by Respondent contained a provision allowing Respondent to post her image on the Company’s website, but did not identify a website, she asked:
You mentioned your website, Could you please email me the link, I am not sure I am on the right one.
Using the email address “info@voguefashionmodels.com”, Respondent’s representative answered:
Vogue’s official website is vogue.com.
The Majority finds this response ambiguous.
It can be construed as either supporting Complainant’s interpretation that this “suggests and affiliation” or, on the other hand, as an effort by Respondent to direct the inquiring model to the “official” Vogue site without making any claim that the link was to its own site.
Despite the ambiguity, this Majority finds that this response favors Complainant, but only slightly.
Although the Majority finds that this exchange is evidence of ordinary likelihood of confusion, the Majority does not find this exchange, by itself, sufficient to support a finding of bad faith use.
As there is no express allegation of bad faith use, Complainant forces the Panel to decide on its own, without benefit of Complainant’s analysis, whether this email exchange is alone sufficient to show the required bad faith use. Although the Dissent would find bad faith use, the Majority is unwilling to do so, concluding instead that Complainant has not met its burden.
The Panel is aware of decisions holding that use of a domain name in an email address alone, without an associated webpage, may constitute bad faith use.
The instant facts pale by comparison to those cases, however, because Complainant has neither alleged nor proved fraudulent misrepresentation or phishing for personal information or, for that matter, any other sort of conduct that would constitute comparable bad faith use.
7. Decision
For the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Presiding Panelist
Debra J. Stanek
Panelist
Date: July 5, 2013
Dissenting Opinion
1. Factual Background
Complainant owns the mark VOGUE, which identifies Complainant’s fashion magazine among other products and/or services. Vogue magazine was launched in 1892, and is published in the U.S. and countries around the world. (Amended Complaint, paragraphs 13, 15 and 18.)
Complainant owns hundreds of trademark registrations for its VOGUE mark, including, for example, U.S. Registration No. 1,336,659, issued May 21, 1985. (Amended Complaint, paragraph 18 and Annex E to the Complaint)
Complainant’s VOGUE mark has been found to be famous. Advance Magazine Publishers Inc. v. Vogue International, 123 F. Supp. 2d 790 (D.N.J. 2000) (preliminarily enjoining use of <teenvogue.com>, <teenvogue.net> and <vogue-international.com> which are confusingly similar to plaintiff’s “highly distinctive and famous” VOGUE mark). (Amended Complaint, Footnote 1.)
Complainant’s website is located at the domain name <vogue.com>. (Amended Complaint, paragraph 16.)
In October 2012, a model or an aspiring model sent an email through the website “www.exploretalent.net” to Respondent at info@voguefashionmodels.com to apply for a modeling job in response to an advertisement or solicitation for a job related to “Donna Karan’s Winter Catalogue”. It is unclear from the record the exact nature of such advertisement or solicitation, including whether it contained the disputed domain name <voguefashionmodels.com> (the “Domain Name”) or the email address info@voguefashionmodels.com and whether there was ever a website at the Domain Name. What is clear, however, is that upon receiving at the email address info@voguefashionmodels.com the model’s inquiry regarding the job, Respondent engaged in multiple communications with the model using the email address info@voguefashionmodels.com. Specifically, Respondent, using the same email address, info@voguefashionmodels.com, responded to the model by inviting her to an in-person interview/casting call, and signed its email with the name “Vogue Fashion Models, Inc.” Respondent informed the model in a subsequent email using the same email address that she was hired for the modeling job. The model then emailed Respondent at the same email address and stated, “Thank you so much for your email and contract. As you advised me, I am carefully reading the contract. You mentioned your website, could you please email me the link, I am not sure I am on the right one.” Respondent’s contract read, “Model hereby grants Company the right to place pictures of Model on any Company Websites […]” Respondent replied using the email address info@voguefashionmodels.com stating that “Vogue’s official website is www.vogue.com,” but did not provide any information regarding its own website. (Annex F to the Complaint.)
The model’s father subsequently contacted Vogue magazine, and asked if “Vogue Fashion Models Inc. is part of the Vogue family.” In his emails, he stated that (a) his daughter responded to a casting call posted by Respondent on the third-party “explore talent” website, (b) the New York address used by Vogue Fashion Models is the same address as Elite modeling agency, (c) he could not find a company registration for Vogue Fashion Models, Inc. in New York state, (d) “They claim to be part of your group, but the contract stipulates FLORIDA law,” and (e) “They have no website. They claim Vogue.com as their website.” (Amended Complaint, paragraph 19 and Annex F to the Complaint.)
Conde Nast, on behalf of Complainant, subsequently sent Respondent a cease-and-desist letter. In response, Respondent stated: “We are not using the name Vogue Magazine, the dba for this company is Vogue Fashion Models, Inc. Our attorneys advised us that there is no relation with Vogue Magazine, so there should be no issue. Our customers are aware of this. We will cease and desist from using this name until this is looked unto further and reverified. We have no desire to use this name if its in fact gives anyone the impression we are Vogue Magazine.” (Amended Complaint, paragraph 21 and Annex H to the Complaint.)
2. Parties’ Contentions
A. Complainant
Complainant alleged:
“(1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and (3) The disputed domain name has been registered and is being used in bad faith.” (Amended Complaint, paragraph 11.)
“Application of each of these [UDRP] factors overwhelmingly demonstrates that Respondent is in violation of the ICANN Policy […]” (Amended Complaint, paragraph 22.)
“There is no doubt that the registration of the disputed domain name has caused and will continue to cause consumer confusion. ‘Fashion Models’ are a prominent fixture in every Vogue publication. Inside the fashion industry and across popular culture, Vogue Magazine is considered synonymous with world-class fashion modeling. Such likelihood of consumer confusion has led prior ICANN arbitration panels and numerous United States federal courts to transfer the ownership, or enjoin the use of domain names that are identical or are confusingly similar to a complainant’s trademarks.” (Amended Complaint, paragraph 23.)
“Knowing the association Vogue Magazine has with premiere modeling, Respondent lures young, aspiring models through its use of the Vogue brand. In addition, Respondent has shown a willingness to refer to Vogue.com in a fashion that suggests an affiliation.” (Amended Complaint, paragraph 29.)
B. Respondent
Respondent did not submit a Response to the Complaint.
3. Discussion and Findings
This Panelist issues the following findings in accordance with paragraph 15(a) of the UDRP Rules (“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.”), and paragraph 10(d) of the UDRP Rules (“The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”).
A. Identical or Confusingly Similar
This Panelist finds that the Domain Name <voguefashionmodels.com> is confusingly similar to Complainant’s VOGUE mark. The Domain Name contains Complainant’s VOGUE mark in its entirety, and the generic or descriptive phrase “fashion models” that relates to Complainant’s business. As Complainant noted, “‘Fashion Models’ are a prominent fixture in every Vogue publication.” See, e.g., Victoria’s Secret Stores Brand Management, Inc. v. Michael Tepelboym, NAF Case No. FA1393068 (finding the domain name <victoriassecretmodels.net> confusingly similar to complainant’s VICTORIA’S SECRET mark); The Neiman Marcus Group, Inc. and NM Nevada Trust v. Unasi Management Inc., NAF Case No. FA448719 (finding the domain name <neimannmarcusfashion.com> among others confusingly similar to complainant’s NEIMANN MARCUS mark); Elite Licensing Company SA, Elite Model Management v. Sencea Brock, WIPO Case No. D2010-1747 (finding the domain name <elite-model-agency.com> confusingly similar to complainant’s ELITE mark because the addition of “two generic or descriptive terms relating to the field in which Complainants operate” does not distinguish the domain name from complainant’s mark, or prevent “[…] the likelihood of confusion in the minds of Internet users and clients of Complainants […]”).
B. Rights or Legitimate Interests
Complainant alleged that Respondent has no legitimate rights or interest in the Domain Name. This Panelist concurs.
Neither the record nor Respondent have proved or demonstrated that Respondent “has been commonly known by the domain name” under paragraph 4(c)(ii) of the Policy. On the WhoIs record for the Domain Name, Respondent’s name is listed as Premier Models International Inc. In emails Respondent sent from the address info@voguefashionmodels.com and on the contract sent from that address, Respondent listed the trade name “Vogue Fashion Models, Inc.” Outside of Respondent’s use of the name “Vogue Fashion Models, Inc.” in connection with the Domain Name, there was no additional evidence in the record that Respondent uses that trade name. (The record did include an allegation by the model’s father that no such business name is registered in New York state, where Respondent is located, and that Respondent’s address corresponds to that of a third-party modeling agency.) In any event, Respondent’s use of the trade name “Vogue Fashion Models, Inc.” does not justify Respondent’s misappropriation of Complainant’s famous and federally registered VOGUE mark in the Domain Name. If that were the case, cybersquatters could freely use and appropriate the trademarks of others as domain names simply by also using a trade name or business name corresponding to the domain name. Both the courts and UDRP panels, however, have rejected this position. See, e.g., Eurotech, Inc. v. Cosmos European Travels AG, 2002 U.S. Dist. LEXIS 13615, at pages 31-32 (E.D. Va. 2002) (holding that an alleged infringer’s changing of its business name to incorporate the allegedly infringing domain name did not make it a legal name or commonly used name for purposes of determining bad faith under the Anticybersquatting Consumer Protection Act (“ACPA”). The district court stated: “If such a name change could preclude a finding of bad faith, an entity could escape the effect of the ACPA simply by registering an infringing domain name and then changing its business name to match the infringing domain name.”); CyBerCorp Holdings, Inc. v. Jay Allman, NAF Case No. FA244090 (“Respondent’s choice of a business name and domain name incorporating Complainant’s trademark was made primarily because of the notoriety of Complainant’s mark and/or with complete disregard Complainant’s trademark rights. Naming oneself with another’s trademark does not legitimatize the use of the name in a domain name. Therefore, Respondent cannot claim rights in the domain name pursuant to Policy 4(c)(ii).”).
Further, Respondent’s bald statement in its response to the cease-and-desist letter that “Our attorneys advised us that there is no relation with Vogue Magazine”, which the Majority interprets as a fact that “[Respondent] relied on advice of counsel when selecting its name”, does not demonstrate that Respondent has been commonly known by the Domain Name. See, e.g., Panavision, Inc. and Panavision International, L. P. v. Ed Meyer, d/b/a/ Panavisions Eyewear and Sunglasses, Domains by Proxy, Inc., and M.P.W., Inc. d/b/a Panavisions Eyewear and Sunglasses, Inc., WIPO Case No. D2004-0002 (“Respondent contends that it has trademark rights in PANAVISIONS and PANAVISIONS.COM. However, Respondent produces no evidence of such rights, whether in the form of registration rights or proof that the terms have acquired secondary meaning sufficient to designate Respondent as the source of particular goods and services. Absent such evidence, the Panel must disregard Respondent’s bald assertion.”); Mars UK Limited v. John Ritchie, WIPO Case No. D2002-0702 (finding no legitimate interest of respondent in the domain name <pedigreepetfoods.com> despite a letter in the record from respondent’s attorney referring to a “detailed opinion from Counsel” and providing an opinion that the terms “pedigree” and “pet foods” were in their view generic).
Finally, Respondent’s agreement, in response to Complainant’s demand letter, to stop using the business name “Vogue Fashion Models, Inc.” – which is effectively identical to the Domain Name – constitutes further evidence that Respondent lacks rights in the Domain Name under paragraph 4(c)(ii) of the Policy.
Neither the record nor Respondent have proved or demonstrated that Respondent has a right or legitimate interest under paragraph 4(c)(i) or 4(c)(iii) of the Policy. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. To the contrary, Respondent has used the Domain Name to negotiate a business contract with a model, and in the course of those negotiations, failed to reveal its own website in response to the model’s direct request for such information. Instead, Respondent, using the email address info@voguefashionmodels.com, pointed the model/applicant to Complainant’s “www.vogue.com” website as its own. Respondent’s actions in referencing Complainant’s website while using the email address info@voguefashionmodels.com reinforced and/or increased the suggestion of an affiliation with or sponsorship by Complainant already created by the Domain Name containing Complainant’s famous mark VOGUE long known for its fashion and modeling content. In addition, Respondent’s overtly commercial use of the Domain Name does not constitute a noncommercial or fair use of Complainant’s mark VOGUE in the Domain Name.
In short, Respondent’s use of the Domain Name to offer modeling agency services does not constitute a bona fide offering of goods or services because (a) the Domain Name is confusingly similar to Complainant’s VOGUE mark, and (b) Respondent used the Domain Name in a manner that caused a likelihood of confusion.
C. Bad Faith Registration and Use
As discussed above, Complainant expressly alleged that Respondent registered and used the Domain Name in bad faith, and provided evidence that Respondent used the Domain Name in its email address to negotiate a business contract over the course of multiple emails. The record also shows that Respondent posted a casting call on a third-party website, and that the model/applicant responded to the casting call and the model’s interest was emailed to Respondent at info@voguefashionmodels.com. When the model asked Respondent for its website address, Respondent failed to provide it, and instead directed the model to Complainant’s “www.vogue.com” website. The model’s father subsequently contacted Vogue magazine and asked if Respondent was “part of the Vogue family.” He also stated, among other things, that “They claim to be part of your group.” Respondent has not contested Complainant’s allegations or the facts presented in its Complaint.
Based on the facts of this case, this Panelist finds that Respondent registered the Domain Name in bad faith with knowledge of Complainant’s rights in its VOGUE mark. This Panelist further finds that Respondent’s use of the confusingly similar Domain Name constitutes bad faith under paragraph 4(b)(iv) of the UDRP, because Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s VOGUE mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s activities.
This Panelist respectfully disagrees with the Majority’s positions on bad faith as discussed in detail below.
First, the Majority holds that Complainant did not allege bad-faith use of the Domain Name. To the contrary, as noted above, Complainant expressly alleged that Respondent registered and used the Domain Name in bad faith.
Second, this Panelist believes that the Majority’s analysis does not give due consideration to Complainant’s unrebutted claims including, for example, that the VOGUE mark is famous and that Vogue magazine, published since 1892, is “one of the world’s most renowned fashion magazines” and is widely circulated; publishes information about “fashion and style,” among other topics; “‘Fashion Models’ are a prominent fixture in every Vogue publication. Inside the fashion industry and across popular culture, Vogue Magazine is considered synonymous with world-class modeling”; and, as a result, consumers viewing the Domain Name “will instantly recognize the Vogue brand and assume Complainant is somehow connected.” Accepting those allegations as true, when considering Respondent’s use of the Domain Name in connection with the fashion and modeling business, Respondent’s activities are in bad faith.
Third, this Panelist respectfully disagrees with the Majority’s position that the Domain Name had to play a role in the model/applicant’s “initial interest” in contacting Respondent. As noted above, the record is unclear on the content of the advertisement or solicitation that prompted the model’s initial inquiry, but the record does indicate that Respondent posted the ad. And the record is clear that the model’s inquiry regarding the job was sent to Respondent at the email address info@voguefashionmodels.com, which created a likelihood of confusion. The record is also clear that Respondent did not dispel the likelihood of confusion caused by its use of the VOGUE mark in its email address. And the record is clear that Respondent, by failing to disclose its own website address in response to the model’s inquiry and instead pointing the model to Complainant’s “www.vogue.com” website, furthered this likelihood of confusion. The Majority describes this interaction as “an effort by Respondent to direct the inquiring model to the Vogue site without making any claim that the link was to its own site,” but in this Panelist’s opinion, the email exchange was clear that the model had asked for Respondent’s website, not VOGUE magazine’s website. Further, the model’s father sent an email to Vogue magazine’s communication department asking if Respondent was “part of the Vogue family,” which demonstrates that Respondent’s use of VOGUE in the Domain Name caused actual confusion. These multiple emails demonstrate that Complainant’s claims do not rest, as the Majority claims, on a “single ambiguous email.”
Fourth, this Panelist respectfully disagrees with the Majority’s characterization of Respondent’s response to the cease-and-desist letter as “contradicting” or “undermining” Complainant’s allegations. Respondent stated, “Our attorneys advised us that there is no relation with Vogue Magazine, so there should be no issue.” As noted above in this Panelist’s discussion on right or legitimate interest, the Majority interprets this sentence as a fact that “[Respondent] relied on advice of counsel when selecting its name.” However, (a) the quoted statement is simply a factual declaration that Respondent has no relation to Vogue Magazine, not a legal opinion, (b) Respondent did not state that the advice it allegedly received related to Respondent’s selection of the trade name or the Domain Name, (c) there is no evidence that this alleged advice of counsel preceded Complainant’s cease-and-desist letter, (d) Respondent did not identify the counsel or provide a copy of counsel’s opinion or advice (if there was such advice), and (e) Complainant’s inclusion of Respondent’s email containing a factual statement attributed to its counsel does not make it a verified allegation of Respondent, which defaulted.
In its opinion, the Majority states, “Evidence that a party relied on advice of counsel when registering a domain name is relevant when deciding whether Respondent acted in bad faith,” citing The Jolt Company v. Digital Milk, Inc., WIPO Case No. D2001-0493 (“However, given the opinion of counsel and the differences in the goods and services of the parties, this does not appear to be a case of deliberate infringement. Legitimate disputes over likelihood of confusion are beyond the scope of the current Policy. […] Thus, Complainant’s remedy for infringement, should it wish to pursue it, is an action for infringement in the United States courts.”). The Jolt decision, however, is inapposite because the panel in that case denied the complaint based on the respondent’s presentation of “sufficient evidence to show ‘demonstrable preparations to use [the Domain Names] in connection with a bona fide offering of goods or services’” and did not reach a finding on bad faith. Here, Respondent presented no evidence of such demonstrable preparations to use the Domain Name for a bona fide offering of services. Nor does the record does not contain any evidence that Respondent uses the Domain Name in connection with a bona fide offering of goods or services.
Finally, this Panelist respectfully disagrees with the Majority’s position that Respondent’s lack of a website associated with the Domain Name controls or has a material bearing on whether Respondent used the Domain Name in bad faith given Respondent’s other activities detailed above. Regardless of whether Respondent used the Domain Name for a website, use of the Domain Name for an email address alone can constitute bad-faith use. There is no requirement under the UDRP that a disputed domain name must be used for a website to be used in bad faith. Complainant has alleged and shown that Respondent used the Domain Name for email, and in doing so, created a likelihood of confusion with Complainant’s VOGUE mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s commercial activities. These facts meet the plain requirements of establishing bad faith under paragraph 4(b)(iv) of the Policy.
The Majority instead appears to impose a higher burden on Complainant. Specifically, in attempting to distinguish this case from prior decisions finding bad faith based on use of a domain name in email addresses, the Majority states: “The instant facts pale by comparison to those cases, however, because Complainant has neither alleged nor proved fraudulent misrepresentation or phishing for personal information or, for that matter, any other sort of conduct that would constitute comparable bad faith use.” Thus, in the Majority’s view, it appears that use of a domain name in email addresses that creates a likelihood of confusion is not enough for Complainant to prevail, and Complainant must also prove phishing or fraud. This Panelist respectfully disagrees. In any event if such conduct was required, this Panelist further submits that Respondent’s actions here in identifying Complainant’s website as its own are highly deceptive and analogous to phishing and fraud.
Further, the Majority does cite and acknowledge prior UDRP decisions involving bad-faith use of a domain name used for email, but this Panelist finds its efforts to distinguish those cases based on differences between the facts of those cases and the instant case unpersuasive. As shown below, four of those decisions were based on commercial attempts to benefit from a likelihood of confusion (paragraph 4(b)(iv) of the Policy), which is the case here, and one was based on a general finding of bad faith.
The Majority summarizes Smiths Group plc v. Lee Snooks, NAF Case No. FA1372112, as “respondent used the disputed domain name in email address to impersonate employee and order ten mobile phones using complainant’s corporate account; also typosquating.” However, the Smiths decision states, “The Panel finds Respondent was attempting to commercially benefit by creating confusion about Complainant’s association with the disputed domain name. Therefore, the Panel concludes Respondent’s use of the <smithsdetections.com> domain name constitutes bad faith registration and use under Policy 4(b)(iv).”
The Majority cites, but does not summarize, News Australia Pty Limited and Twentieth Century Fox Film Corporation v. Ron Kushner, NAF Case No. FA1446275, which held “[t]he record amply demonstrates that Respondent registered and is using the disputed <newscorp-fox.com> domain name to create a likelihood of confusion among Internet users as to the possibility that Complainant is the source, [sponsor], affiliate or endorser of Respondent and its activities conducted under the banner of the domain name. It is also evident that Respondent intends to profit from the behavior outlined in the Complaint. This is evidence of bad faith [registration] and use of the domain name under Policy 4(b)(iv).”
The Majority summarizes Victoria’s Secret Stores Brand Management, Inc. v. Private Whois victoriassecret-usa.com, NAF Case No. FA1415313, as “respondent has used the domain name in question in connection with an e-mail address incorporating the domain name to send fraudulent emails, posing as a Human Resources Manager for Victoria’s Secret.” The Victoria’s Secret decision, however, held that “Complainant believes that Respondent benefits financially from such use of the domain name by causing confusion between the e-mail address and domain name and Complainant’s company. The Panel agrees and finds that Respondent’s attempts to pass itself off as Complainant, presumably for financial gain, is a violation of Policy 4(b)(iv).”
The Majority summarizes Mary Kay, Inc. v. Guillermo Machado a/k/a None c/o Amarachi Joseph, NAF Case No. FA1283193) as “respondent used the disputed domain names to pass itself off as complainant in order to phish for Internet users personal information through email solicitation.” The Mary Kay decision, however, held that “this constitutes bad faith registration and use pursuant to Policy 4(b)(iv)” and “Respondent’s phishing scheme is creating a likelihood of confusion […]”
Accordingly, the decisions in Smiths, News Australia Pty Limited, Victoria’s Secret, and Mary Kay support, rather than undermine, a finding that Respondent’s use of the Domain Name for email and to create a likelihood of confusion constitutes bad faith.
Regarding the fifth decision, Anheuser-Busch, Incorporated v. Private Whois Service c/o budweiser-usa.com, NAF Case No. FA1335010, the Majority summarizes it as “using the disputed domain name as part of phishing scheme to collect personal information.” The Anheuser-Busch decision held, “Respondent hosts e-mail addresses with its <budweiser-usa.com> domain name which Respondent uses to attempt to gain personal and financial information from Internet users through fake job postings. The Panel finds Respondent’s use of the disputed domain name for such a purpose constitutes bad faith registration and use pursuant to Policy 4(a)(iii).”
Like the above-discussed decisions, the Anheuser-Busch decision also supports a finding of bad faith in this case. Here, Respondent used the Domain Name to negotiate a modeling contract that granted Respondent rights to post photographs of the model on “any Company websites,” which Respondent failed to disclose in response to the model’s request. Instead, Respondent directed the model to Complainant’s “www.vogue.com” website. The model’s father then asked Vogue magazine if Respondent was “part of Vogue,” and stated, “They claim to be part of your group.” For purposes of the UDRP, this Panelist believes that Respondent’s bad-faith activities are just as actionable as the phishing cases.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panelist would order that the Domain Name <voguefashionmodels.com > be transferred to Complainant.
David M. Kelly
Panelist (Dissenting)
Date: July 5, 2013
1 The Dissent disagrees and asserts that Complainant did allege bad faith use. The Dissent refers to paragraph 11 of the Complaint, where Complainant asserts that Respondent is required to submit to a mandatory administrative proceeding because all three elements of the Policy are met, including “the domain name has been registered and is being used in bad faith”. Respectfully, in the Majority’s view, this conclusory jurisdictional recitation of the Policy does not substitute for factual allegations of bad faith use. The relevant allegations are in paragraph 29 of the Complaint, which omits any allegations of bad faith use of the disputed domain name.
2 Contrary to the Dissent’s characterization, the Majority does not hold that the UDRP only applies to use of a domain name in conjunction with a website. The Majority fully recognizes that use of a domain name in association with email may violate the Policy.
I give you credit for these panelists taking their work seriously, Berkens. The fact that we discuss these matters on these blogs is beginning to have an impact.
The panelist definitely earned their money on this one