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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v Marcellod Russo
Case No. D2001-1049
1. The Parties
The Complainant is Advance Magazine Publishers Inc., Four Times Square, New York, NY 10036, USA.
The Complainant’s Representative is Sabin Bermant & Gould LLP, Four Times Square, New York, NY 10036.USA.
The Respondent is Marcellod Russo, Lot 6 Captain Cook Drive, Kurnell, Sydney NSW, 2231, Australia.
The Respondent’s Representative is Williamsons Solicitors, Suite 47, Level 9, 88 Pitt Street, Sydney 2000.
2. The Domain Name and Registrar
The Domain Nam is <vogueaustralia.com>.
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was received by WIPO by email on August 21, 2001, and in hardcopy form on August 23, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Network Solutions, Inc has confirmed that <vogueaustralia.com> ("the Domain Name") was registered through Network Solutions, Inc and that Marcellod Russo is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On September 7, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was September 27, 2001. A Response was received by WIPO on September 20, 2001.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is November 23, 2001.
4. Factual Background
The Complainant is a New York corporation better known to many by the name of its unincorporated division, Condé Nast. It publishes a variety of magazines, one of the best known of which is Vogue.
Vogue was first published in 1892. The Australian edition was first published in 1959. The name Vogue is emblazoned across the top of the front page in large capital letters and the word Australia appears in smaller capital letters within the O of Vogue. Through its affiliates and licensees the Complainant also operates online editions of Vogue. The webpages for the Australian edition are headed "Vogue Australia".
On May 30, 2000, the Respondent registered the Domain Name.
On January 17, 2001, the Complainant’s Australian Attorneys wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights and demanding transfer of the Domain Name to the Complainant.
On February 19, 2001, the Respondent replied. The Response is an important one as it purports to address the Respondent’s motives behind the registration. It reads as follows:-
"In reference to your letter dated 16 January, 2001 please refer to the following:
It would be advantageous for me to say at this point that it was not my intention when developing the concept of my proposed virtual site/shop name to interfere with any other ongoing business. The virtual store that I have in mind is one that offers flowers (of the plastic and real variety) throughout Australia with the intention of expanding globally, if my instincts were to be proven correct.
It was my intention to identify my target market and develop an address accordingly. After closely studying the market and it’s consumers it became apparent that when dealing in floristry the consumers are now looking towards trendy arrangements, something different, something exciting and in style. I looked at different words that conveyed this message such as mode; trendy; fab etc. but the one that I felt most consumers would understand was ‘Vogue’, hence the registration of <vogueaustralia.com>.
Since registering this address I have invested many hours of labour conceptualising the virtual store and to do this one must also invest a large monetary sum. My plans have incorporated the use of the address and to change it at this stage would prove both costly and detrimental to my business plan. I would be forced to reinvest both time and money to deliver the same business yet achieve no extra profit or financial benefits by doing this.
It is still my belief that, after having been made aware of the situation by the letter referred to above, I am in no way competing in the same market and therefore the sincerity of my registration becomes apparent. As stated previously, I registered this address for a virtual florist and the use of the word ‘Vogue’ was a decision made after extensive market research.
It is my belief that costs to date and the potential loss at not being able to use this address or the marketing and business plan associated with it equates to approximately $60,000.00.
I trust you can understand my situation and I would look forward an agreement being reached that can suit both of our needs and businesses.
I look forward to hearing from you shortly and any suggestions/remedies that you feel may best suit this situation."
On February 28, 2001, the Complainant’s Attorneys wrote again to the Respondent reiterating the basis for the Complaint, doubting that the Respondent could not have had the Complainant’s trade mark in mind when "developing the context" of his proposed website, suggesting that the $60,000 estimate was an exaggerated figure and seeking further details of that figure.
On April 9, 2001, the Respondent replied setting out the figures being $5,500 for discussions with his accountant, $15,000 for a trip to America, $5,000 for local marketing, $15,000 for developing and setting up the website and $20,000 for goodwill "representing my unpaid time and effort if I am prevented from going ahead with my chosen business name".
On June 25, 2001, the Complainant’s Australian Attorneys wrote to the Respondent once more seeking, inter alia, the Respondent’s agreement to transfer of the Domain Name, failing which an ICANN Complaint would be instituted.
As at August 8, 2001, the Domain Name pointed to a web page indicating that the site was under construction.
5. Parties’ Contentions
The Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The Complainant is the proprietor of a large number of trade mark registrations of or incorporating the word VOGUE. It is the proprietor of several Australian registrations, the earliest of which dates back to 1960.
Vogue is a famous brand of the Complainant and VOGUE AUSTRALIA is instantly associated with the Complainant’s Australian magazine.
Consumers who view the Domain Name will assume that it is a registration authorised by or affiliated with the Complainant.
The Respondent has no rights or legitimate interest in the disputed Domain Name.
The Respondent has no right to the Domain Name. The Complainant has never granted the Respondent any right to use or register VOGUEAUSTRALIA.
Prior to registration of the Domain Name, the Respondent had made no legitimate use of the Domain Name and had no right to use the name VOGUE or the name VOGUE AUSTRALIA.
The Domain Name was registered and is being used in bad faith.
The Complainant contends that the Respondent registered the Domain Name with full knowledge of the Complainant’s longstanding rights in the name and that the proposed use will be likely to cause confusion.
The Respondent is very aware of the strength of the VOGUE AUSTRALIA brand in Australia and is intent on using that knowledge by registering the Domain Name for commercial gain and to trade on the Complainant’s goodwill.
The Complaint is seriously defective in that it omits to mention important details.
It fails to mention that there are 52 VOGUE trade mark registrations in Australia, many of which are not held by the Complainant. Other proprietors of VOGUE trade marks in Australia include manufacturers of vehicles, cigarettes, paints, carpets, vanity tops, data processing equipment, paper and cardboard packaging and tissues and lotions.
Further, the Complaint fails to mention that the Complainant’s activities under the name VOGUE "range well beyond its magazine publishing activities. It appears that it has deliberately restricted the description of the use of the mark so that it is able to make the statement which is made in paragraph 20 [of the Complaint] where it states "… consumers, advertisers, the media … instantly associate the name VOGUE AUSTRALIA with Complainant’s magazine."" The Complaint fails to draw attention to the fact that the Complainant uses the mark VOGUE in relation to a wide range of other activities including furnishings, sunglasses, cosmetics, gardening landscape design, floor covering, real estate services, umbrellas, leather goods, glassware, TV fashion and beauty information, imitation jewellery and fabrics and clothing, footwear and headgear.
The Respondent contends that the use of AUSTRALIA "is merely a geographical indication as to where the activity is taking place and that the issue is simply as to whether or not the word VOGUE leads inexorably to a mental association with magazines. The Respondent contends that the use of the mark in relation to other activities means that people will not automatically associate the Domain Name with the Complainant’s Australian magazine.
The Respondent observes that the list of the Complainant’s activities under the VOGUE mark does not include floristry.
The wide breadth of uses of the mark unconnected with the Complainant render the Complainant’s passing off claim in respect of the Domain Name unsustainable.
The Complainant has pleaded a position which ought to be protected by a famous mark registration, but has failed to mention that there is no such registration.
The Complainant has failed to mention that there are others who have registered VOGUE as a business name and who are operating within the scope of the Complainant’s trade mark registrations. It has also failed to state that its wide range of activities do not include floristry.
The intention of the Respondent to trade as a virtual florist is a genuine intention. That is not a bad faith use of the name.
All that is intended by use of the name is putting purchasers in mind of the fact that their purchases will be in keeping with modern trends. The Complainant does not have an exclusive right to the use of the word VOGUE. It is a dictionary word in everyday use.
The reason why the Domain Name is not connected to an active website is that when the Complainant first raised the matter with the Respondent, the Respondent’s development work had not been completed. Thereafter it did not make sense to continue with that work pending resolution of the dispute.
The idea behind the venture was that it would be owned by the Respondent and that his partner would run it. Initial discussions took place in early 2000 and the name was decided upon. Investigation into the opportunity was delayed because of other business commitments.
During the start up phase the Respondent agreed with his partner to cover household expenses payable by his partner in lieu of remuneration to his partner for work done to establish the business.
Those payments during the period January 2000, to January 2001, total $25,230 being $10,000 for 50% of car repayments over a 12 month period, $2,600 fuel and servicing costs, $7,500 50% of rent over a 12 month period, $280 registration costs, $850 floristry course in Sydney, $2,500 for the Respondent's time in consulting with his partner, visiting nurseries etc and initial work in website design.
Other costs previously claimed have been abandoned as they are not exclusively connected with the pursuit of the project.
The Respondent claims that the Complaint is defective, because it reveals without prejudice correspondence.
The Complainant has failed to show the necessary ingredients for a Complaint under this administrative procedure and "the Respondent has an inviolable right to maintain his legal right in the property of the name.
The Complainant is not involved in floristry, but is involved in a wide range of other activities. The Australian laws of passing off and misleading and deceptive conduct – which are not available to the Complainant in all the circumstances of this case – are the only potential legal impediments which could potentially prevent the Respondent’s ownership of the name.
The Respondent denies that the Complainant has any right to have the name transferred to it.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Before addressing those issues it is necessary to deal with the Respondent’s allegation that the Complaint is defective, because the Complainant has published without prejudice correspondence.
The Panel takes this allegation to cover the Respondent’s letter of February 19, 2001, written in response to the Complainant’s Attorney’s open letter of January 17, 2001, and the immediately following exchange in which the Complainant seeks details of the figures supplied by the Respondent and the Respondent supplies those details.
The policy behind the without prejudice rule is that litigants to a dispute should not be deterred from coming to a compromise settlement out of Court for fear that their willingness to compromise will be drawn to the Court’s attention and thereby in some way prejudice the Court’s attitude towards their case.
Accordingly, in the normal course of events in civil litigation in jurisdictions which recognise the rule, correspondence entered into with a view to achieving an out of Court settlement cannot be produced to the Court hearing the case. The rule applies whether or not the correspondence is in fact marked "without prejudice". The rule is particularly important in the context of civil litigation, which is often expensive to conduct and which can involve awards of damages and costs.
In the context of the UDRP the situation is very different. The procedure is relatively cheap. The Panel has no power to award damages or costs. The procedure does not preclude a party from litigating the issue and in the event of subsequent litigation the without prejudice rule would normally apply in that litigation. An offer to transfer the domain name in issue for a valuable consideration in excess of the Respondent’s out of pocket expenses may well go to the heart of the issue which the Panel has to decide. If such offers are to be precluded from consideration, the efficacy of the policy will be severely undermined.
Since the rule applies to settlement proposals irrespective of whether they are marked "without prejudice" it is not difficult to see that there is vast scope for disagreement between different panels as to the manner in which the rule will be applied. Indeed, the rule may be completely foreign to the jurisdictions of some panelists. Accordingly, to make the rule applicable to the UDRP could well lead to chaos.
Additionally, when registering a domain name the registrant signs up to the Policy and knows therefore that in so doing he exposes himself to the risk of a complaint. He also knows that circumstances indicating that he has registered the domain name with a view to selling it to the Complainant for a valuable consideration in excess of his out of pocket expenses, will or may be evidence of registration and use of the domain name in bad faith. Accordingly, in signing up to the Policy, he cannot sensibly object to the Panel looking at all potentially relevant evidence and whether or not that evidence emerges from without prejudice correspondence.
The Panel adopts with approval the rationale of one of the members of this Panel, David Bernstein, in his decision on the same topic in Magnum Piering Inc v. The Mudjackers & anor. (WIPO Case D2000-1525).
For all the above reasons the Panel concludes that in this case there is no reason why it should not have considered all the correspondence put forward by the Complainant in evidence.
Identical or confusing similarity
The Complaint comprised no evidence whatsoever that the Complainant has any rights in the mark VOGUE and VOGUE AUSTRALIA -- apart that is from a bare assertion to that effect.
No trade mark registration certificates were exhibited, simply a non-specific schedule of registrations. The registrations clearly exist, but there is no documentary evidence before the Panel as to the identity of the owner.
The members of the Panel see this differently. One panelist takes the view that the Complainant’s counsel’s certification of the Complaint is sufficient verification. Another of the panellists is not so sanguine. Happily, however, the point is an academic one as the Respondent has made the necessary admissions.
The Complainant’s registered trade mark is VOGUE and as the Respondent has asserted, Australia of itself is simply a generic geographical indication.
The Panel is of the view that to most consumers the title of the Complainant’s Australian magazine in its printed form is VOGUE. The Panel nonetheless accepts that a not insignificant number of consumers and many people in the trade are likely to refer to the Australian edition as Vogue Australia.
The Panel further accepts that the online edition of the magazine is described as VOGUE AUSTRALIA.
The Panel finds that the reputation and goodwill of the Complainant in respect of the names VOGUE and VOGUE AUSTRALIA are such that if any unauthorised third party were to start using the name VOGUE or the name VOGUE AUSTRALIA as the title of a magazine, the Complainant would have a very strong case under the law of passing off or some similar cause of action. The Panel accordingly finds that the Complainant has common law rights in respect of the names VOGUE and VOGUE AUSTRALIA and in addition to the Complainant’s registered rights in respect of VOGUE.
The fact that the name VOGUE is a dictionary word and is widely used in everyday conversation as an ordinary English word does not prevent the Complainant having trade mark rights in the word. There are literally thousands of valid trade marks which consist of ordinary English words.
The fact that other people may own rights in the name VOGUE in relation to activities other than magazines does not detract from the fact that the Complainant has rights in the word in relation to magazines. The fact that the Complainant itself uses the mark in relation to the activities other than magazines, again, does not detract from the Complainant’s rights in the name in respect of magazines.
The Domain Name comprises the Complainant’s registered trade mark plus the geographical adjunct "Australia" and the generic .com suffix. It comprises the Complainant’s common law trade mark VOGUE AUSTRALIA and the generic .com suffix.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
In this case, as with so many cases under the Policy, the issue as to whether the Respondent has rights or legitimate interests in respect of the Domain Name is inextricably tied up with the issue as to whether or not the Domain Name was registered in bad faith and is being used in bad faith.
In the round, the end result of this Complaint all depends upon whether the Respondent is telling the truth.
The Respondent’s story is that in early 2000 he and his partner decided upon the name VOGUE AUSTRALIA for his virtual floristry business. He came to the arrangement recited in paragraph 5 above whereby he paid certain expenses, some of which were household expenses and some of which related to the business. To the extent that they were household expenses (eg car expenses and rent), they were payments made in lieu of salary to his partner.
The Respondent says that he did not have the Complainant in mind when he registered the Domain Name.
The Complainant does not accept the Respondent’s story and asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name because the name is, the Complainant says, self evidently the Complainant’s name and the Complainant has not authorised the Respondent to use it.
In this case the Panel’s task under this head is to determine:
a. whether the Complainant has made a prima facie showing that the Respondent lacks rights and/or legitimate interests in respect of the Domain Name and, if so,
b. whether the Respondent has shown demonstrable preparations to make bona fide use of the name pursuant to paragraph 4(c) of the Policy.
The burden of proof is on the Complainant. While the Complainant has produced no evidence of its own (beyond the evidence as to the fame of its mark and the absence of any licence to the Respondent), it is able to pray in aid the Respondent’s letters of February 19, 2001, and April 9, 2001, and the Response. In those letters of the Respondent he sought $60,000 from the Complainant. In the Response, the figure is reduced to some $25,000.
The Respondent’s explanation for the reduction in the figures raises more questions than it answers. The Panel has to ask itself why the Respondent, if he seeks to provide an explanation as to why he has rights or legitimate interests in respect of the Domain Name (as Respondents are invited to do by paragraph 4(c) of the Policy), has not produced any documentary evidence to support his explanation. It would have been so easy for him to do so. A letter from his accountant confirming the initial discussions, or documents demonstrating the substantial work he claims to have undertaken in relation to his website. Even a letter demonstrating attendance at the floristry course in Sydney might have helped. However, there is nothing.
For present purposes it is sufficient simply to say that the Complainant has made out a prima facie case and the Respondent has failed to demonstrate to the satisfaction of the Panel that he was preparing to use the Domain Name for the purpose he claims.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
As indicated above, much turns on whether the Panel is able to accept the Respondent’s version of events. The Panel has not felt able to do so for the reasons given. Additionally, it is fair to say that the Respondent’s extortionate claim particularised in the Respondent’s letter of April 9, 2001, which is now admitted to have included non-existent/irrelevant business expenses, reinforced the Panel in its views as to the motivation and credibility of the Respondent.
The Panel finds that at all material times the Respondent was aware of the existence of the Complainant’s Australian edition of Vogue. In the absence of any credible evidence to suggest that the Respondent had any real intention to use the Domain Name to connect to an internet facility of the kind he describes, the Panel concludes that in putting forward the explanation that he has, he has been seeking to hide his true intention.
The Panel finds that, as the Complainant asserts, the Respondent’s intention was to derive commercial benefit from the Domain Name on the back of the Complainant’s goodwill in respect of the names VOGUE and VOGUE AUSTRALIA. The intention might have been to sell the Domain Name to the Complainant for a substantial sum of money, or it could have been to benefit unfairly from confusion resulting from use of the Domain Name in relation to a business of the Respondent.
The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith along the lines of one or other of the examples set out in sub-paragraphs 4(b)(i) or (iv) of the Policy.
In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Panel direct that the Domain Name be transferred to the Complainant.
Michael Charles Pryles
Dated: November 22, 2001