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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edizioni Condè Nast S.p.A. v. Francesca Fasoli
Case No. D2001-1128
1. The Parties
Complainant is EDIZIONI CONDÈ NAST S.p.A., having registered offices in Via Leopardi, 1, 20123 Milan, Italy. The Complainant’s authorized representative in this administrative proceeding is Elisabetta Mina c/o FRESHFIELDS BRUCKHAUS DERINGER, Via dei Giardini, 7, 20121 Milan, Italy.
The Respondent is FRANCESCA FASOLI, Via Missaglia 41, 20142 Milan, Italy.
2. The Domain Name and Registrar
This dispute concerns the domain name <vogueitalia.com>; hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a Complaint (hereinafter the Complaint) by email on September 14, 2001, and in hardcopy on September 18, 2001. On September 19, 2001, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On September 20, 2001, Network Solutions, Inc. transmitted via email to the Center, its Verification Response, confirming that the registrant is FRANCESCA FASOLI and that the Domain Name registration is in "active" status.
Having verified that the Complaint satisfied all the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), the Center transmitted on September 21, 2001, to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding by fax and email (without enclosures) and by post (with attachment) on September 24, 2001. On September 21, 2001, the Center transmitted via email, copies of the foregoing documents to "mailto:firstname.lastname@example.org" and to Network Solutions Inc.
On October 15, 2001, having received no Response from the Respondent, the Center issued a Notification of Respondent Default. No reply by Respondent to the Notification of Respondent Default was received.
On October 16, 2001, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received the Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on October 17, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date for October 31, 2001, in which the Panel was formally appointed. The Sole Panelist finds that the Administrative Panel (hereinafter the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
Therefore, the Panel shall issue the Decision on the basis of the Complaint, the Policy, the Rules, the Supplemental Rules and any rules and principles of law deemed applicable, without the benefit of any Response from Respondent.
4. Factual Background
The Complaint is based on a number of trademarks registrations consisting of and including the word VOGUE in the name of companies belonging to the Condè Nast Group in several countries worldwide such as: United States, France, Germany, Italy, United Kingdom, etc. A list of some of the Italian Condè Nast Group’s trademarks evidencing the classes for which they have been registered is also provided to the Complaint. The trademark "VOGUE ITALIA" was registered by Complainant at the Italian Patents and Trademarks Office on September 29, 1965, and it has been duly renewed until 2005 (first registration No. 207823 – renewal registration No. 496080) in class 16 for magazines dealing with fashion, beauty, interior design, entertainment, publications in general and advertising activities (and for various collateral goods including stationery, household items, packaging, etc). Copy of said trademark and its renewal is enclosed to the Complaint.
In addition, Complainant and its affiliated company Edizioni VHI S.r.l. registered several gTLDs and ccTLDs domain names including <vogue.it> and <vogueitalia.it> respectively registered on June 2, 1999, and February 9, 2000, (copies of the whois print-outs in respect of the latter domain names are enclosed with the Complaint).
The Respondent registered the domain name <vogueitalia.com> on September 14, 1999.
5. Parties’ Contentions
Complainant and its associated companies (hereafter referred to as the "Condè Nast Group") operate worldwide in various business related to fashion and style, including publication of famous fashion magazines, such as the well known periodical "VOGUE". Since the company's foundation dates back to 1900, the Condè Nast Group has expanded into one of the world's leading international publishing houses.
Complainant is an Italian publisher of several well-known fashion magazines: such as "VOGUE SPOSA", "VOGUE BAMBINI", "L’UOMO VOGUE", as well as the magazine "VOGUE ITALIA", a periodical publication which has been distributed throughout Italy and internationally since 1966. "VOGUE ITALIA" has been a leading fashion style magazine both in Italy and internationally for many decades providing coverage of Italian trends in the world of fashion, beauty, health, cosmetics, entertaining, decorating, food, travel and the arts.
Complainant states to have invested considerable resources in advertising its magazine under the trademark "VOGUE ITALIA" through radio and television, as well as through market research.
Complainant highlights that the domain name is owned by an Italian individual. It was pointing at a personal web page (http://members.nbci.com/Tweety_lf/) which displayed an animal (presumably a fox) with a banner head which reads as follows: "Why do you want wear me … don’t kill me" (copy of a print-out from the Respondent’s web site at <vogueitalia.com> in enclosed to the Complaint). The page was subsequently changed, and is presently linked to <members.xoom.com/Tweety> displaying an animal similar to a bird.
Complainant became aware of Respondent’s registration of the domain name <vogueitalia.com> in April 2001, when was attempting to register the domain name. On May 16, 2001, Complainant sent a letter of objection to Respondent asserting its rights to use the domain name <vogueitalia.com> and requesting Respondent to cease the unlawful use of the Vogue’s registered trademark, to transfer the domain name to Complainant and offered a sum equal to the expenses sustained by Respondent in registering the domain name at issue.
Respondent replied by a letter dated May 25, 2001, objecting the Complainant’s right to use the domain name <vogueitalia.com> and declared his willingness to transfer the domain name to Complainant either in exchange of the domain name <vogueitalia.it>, which was registered by Complainant, or for an "appropriate" financial offer.
By letter dated June 29, 2001, Complainant confirmed its rights on the domain name <vogueitalia.com> and its offer to reimburse exclusively the expenses afforded by Respondent in registering the domain name. In addition, Complainant denied the possibility of reaching any settlement with respect to the transfer of the domain name <vogueitalia.it>, as envisaged by Respondent in its previous letter.
By letter dated July 20, 2001, Respondent contested the Complainant’s rights to the domain name "vogueitalia" "being the word ‘Vogue’ in the common phraseology of the English speaking countries" and confirmed the content of its previous letter refusing the transfer of the domain name to Complainant unless an "appropriate" alternative solution was reached (copy of the correspondence between Complainant and Respondent is enclosed to the Complaint).
Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of several trademark registrations and applications for VOGUE in different countries, including the Italian registration No. 207823 / No. 496080 dating back September 1965, in class 16 for the word mark VOGUE ITALIA.
In view of the above, the Panel finds that the Complainant has proved that the second level of the Domain Name is identical to the trademark of the Complainant according paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
Furthermore, there is no evident relationship between the Respondent and the Complainant and Respondent is not apparently commonly known by the domain name in question, is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
The Panel considers the first letter addressed to the Complainant on May 25, 2001, it was requested an "appropriate financial offer" for the transfer of the domain name or an exchange for <vogueitalia.it> (sic). In the subsequent letter addressed to the Complainant on July 12, 2001, Respondent explicitly refused to transfer the instant domain name for a sum corresponding to the expenses and reiterated the requested for "an appropriate alternative … solution …, as I already mentioned in my prior letter". Therefore, the panel finds the paragraph (i) is applicable in the instant case.
Respondent has also stressed in the letter of July 12, 2001, the scarce interest of the Complainant in the present domain name stating that the Complainant has "on May 1994 registered the domain name vogue.com without ever considering the potential need to also register vogueitalia.com not even after five years, a length of time which I consider more than long enough to realize an interest in the domain name".
The Panel finds that the Complainant’s lack of action does not mean that others may register domain names that are identical or confusingly similar to Complainant’s marks as already stated i.a. in Bloomberg L.P. v. G. Sandhu FA0012000096261 (NAF February 12, 2001).
The Respondent has also indicated in the same letter addressed to the Complainant on July 12, on account of the supposed "low distinctive character" of the sign VOGUE, the plan to use the domain name for a web site in English in the field of fashion. The Panel finds that it would not be necessary to wait until the Respondent actually uses <vogueitalia.com> in such a manner, as it will be inevitable that such use will create the type of confusion described in the Policy and there is no indication that such use will be of a non-infringing purpose. See also Phat Fashions v. Kruger, FA 96193 (NAF December 29, 2000), and Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (November 23, 2000).
Furthermore, it could be inferred from the quoted statements of the Respondent that she was aware of the existence of the trademark VOGUE ITALIA at the time of the registration of the domain name < vogueitalia.com>.
In view of the above, the Panel finds that Respondent registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is identical to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and used in bad faith. Accordingly, the Panel requires that the registration of the domain name <vogueitalia.com> be transferred to the Complainant.
Dated: October 28, 2001