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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marie Claire Album S.A. v. Buy This Domain
Case No. D2002-0677
1. The Parties
The Complainant is Marie Claire Album SA, a French corporation with an address at 10, Boulevard des Frères Voisin, 92130 Issy-Les-Moulineaux, France.
The Respondent is Buy This Domain, an organization of an unspecified nature the address of which is at 5444 Arlington Avenue g14, Bronx, NY-10471, United States of America. According to the registration information provided by the Registrar, the administrative contact for the Respondent is Mr. John Barry.
2. The Domain Name and Registrar
The domain name at issue is <marieclairemagazine.com>.
The Registrar is eNom, Inc. having its address at 16771 NE 80th Street, Suite #100, Redmond, WA 98052, United States of America.
3. Procedural History
A complaint was submitted in electronic format and received by the WIPO Arbitration and Mediation Center (hereinafter the "Center") on July 19, 2002. The complaint formally states that it had been sent by e-mail and registered mail to the Respondent and the Registrar. The Center acknowledged receipt of the said complaint with copy to the Respondent. The original hard copy of the complaint was received and reviewed by the Center in light of paragraph 4(a) of the Rules and paragraph 5(a) of the Supplemental Rules on July 23, 2002. By e-mail of the same day, with copy to the Respondent, the Center requested that four copies of the complaint be sent in hard copy to the Center with an accompanying amendment indicating the Registrar. Such additional hard copies and amendment to the complaint were sent to the Center on July 24, 2002, and received by the Center on July 30, 2002. An electronic version of the amendment and communication to the Center was sent by the Complainant, copied to the Respondent on July 24, 2002.
On July 19, 2002, the Center also sent to the Registrar, a Request for verification of the Registrar. The Registrar confirmed to the Center that (1) so far it had not received a copy of the complaint, (2) it was the Registrar for the domain name at dispute, (3) the Respondent was the current registrant of the domain name at dispute, (4) the details of the Respondent could be found on the Registrar whois web page, (5) the UDRP was applicable to the said domain name, (6) the domain name at dispute was locked, (7) the language of the registration agreement was English and (8) the registrant had submitted to the jurisdiction of the principal office of the Registrar.
On July 24, 2002, the Complainant sent a copy of the original complaint as well as the amendment to the Registrar by electronic mail and courier.
On July 31, 2002, the Center sent to the Respondent by e-mail and by courier, the standard Notification of Complaint and Commencement of Administrative Proceeding, with the Complaint and its amendment. The e-mail containing such documents was sent to the Respondent's e-mail address registered with the Registrar (Dom4Sale@aol.com) and at the e-mail address indicated on the web site to which the domain name at dispute was pointing (firstname.lastname@example.org). The administrator of the said anti-abortion web site confirmed that it had no relationship with the domain name at issue and would not participate in the proceedings.
On August 22, 2002, the Center notified the parties that the Respondent had failed to answer by the indicated deadline and was in default.
After it received the undersigned panelist's statement of acceptance and declaration of impartiality and independence, the Center notified the parties on August 28, 2002, of the appointment of the panel.
The Sole Panelist is satisfied that the Center complied with the procedural requirements specified in the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is the owner of the trademark and service marks "marie claire". Marie Claire is a French magazine dedicated to women and created in 1937, covering information such as fashion, beauty, health and many other issues of concern to women in general. An American edition in English was launched in 1994. Nowadays, there are 24 different international editions of the magazine covering a wide geographic area including for the most recent territories, Russia and Poland. The French editions include various magazines the title of which is Marie Claire followed with a descriptive term such as "Maison" or "Idées".
Two trademarks were registered in France by the Complainant, "Marie Claire" and "Marie-Claire", respectively under Reg. Nos. 1.712.118 and 1.712.366, covering respectively, the classes of products 3, 4, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 41 and all classes of products from 1 to 42. These trademarks were internationally extended under the Madrid Arrangement in 1956 and 1967, under numbers 2R193.599 and R338.976.
All such trademarks appear to have been regularly renewed and are still in force.
In the United States of America, the Complainant registered two trademarks which are still in force, covering, respectively, classes 16 and 38.
The Respondent registered the domain name <marieclairemagazine.com> on March 28, 2002. This domain name points to an anti-abortion website <abortionismurder.org> describing itself as "the most convincing, fearless and informative profile website" and containing crude pictures and pamphlets against abortion. The web site homepage contains a grid of keywords such as "Partial Birth Murder," "Politics," "Nazi Connection," "Methods of Slaughter," etc. that can be clicked by the reader leading to various materials. It also displays two large pictures of two foetuses aged 21 weeks with a text "An innocent unborn child is brutally murdered every 22 seconds in the United States." The manager of this web site, Mr. Thomas P.A. Fitch, denies being the holder of the disputed domain name and would not take any action against other domains pointing to his organisation's web site.
On May 3, 2002, the Complainant wrote to the Respondent to inform them that the disputed domain name is violating their trademarks and to put them on notice to transfer the disputed domain name to the Complainant by May 20, 2002. The two communications made by fax and courier failed to reach their intended recipient. However, the Respondent replied to the e-mail: "I don't open attachmsnts (sic!) but I am selling this domain for $500. Let me know, John."
Three days later, the Complainant sent, by e-mail only, the same cease and desist communication to the Respondent. A reply from the Respondent followed indicating a web site address where the domain name could be purchased for $500: "You can buy this domain for $500 at JimFox.com". "www.jimfox.com" is a web page offering "domains for sale" and referring to "Paypal" for payment. When clicking on the "buy now" icon, a "Paypal" page automatically opens ready for payment to Dom4Sale@aol.com of USD 500.- for the sale of a domain.
On June 11, 2002, the Complainant informed the Respondent, by e-mail, that it did not want to purchase the domain and was taking action against them.
5. Parties’ Contentions
According to the Complainant
- "the Respondent's domain name <marieclairemagazine.com> is likely to confuse the public on the owner of this domain name. The first part "marieclaire" is identical in appearance and sound to the Complainant's mark MARIE CLAIRE. The Respondent has merely added the word magazine, which is generic and descriptive to identify press activity. It's obvious that the domain name marieclairemagazine.com makes automatically think about the famous Complainant's magazine MARIE CLAIRE.";
- the Respondent "has not told the Complainant what are his rights on MARIE CLAIRE after they have been given notice to transfer the Domain name to the Complainant or to cancel it.";
- as a result, "the domain name <marieclaremagazine.com> should be considered as having been registered and used in bad faith because the Respondent has registered the domain name in the only purpose of selling it to the Complainant.";
- "the contents of the web site linked to this domain name shows the bad faith of the Respondent. It is an anti-abortion web-site, which is contrary to the Complainant's magazine MARIE CLAIRE spirit (copy of the first page of the web site in Annex M). MARIE CLAIRE is a modern women magazine which defends women rights, and it's obvious that the registration of this domain name was just a way to make the Complainant react and buy this domain.";
as a result, the Complainant requested that the domain name <marieclairemagazine.com> be transferred to the Complainant.
The Respondent did not reply to the notice sent by the Center.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the conditions under which the holder of a trademark can obtain either the cancellation or the transfer of a disputed domain name:
i) the domain name at dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
ii) the holder of such domain name has no rights or legitimate interests in respect of such domain name; and
iii) the domain name at stake has been registered and is being used in bad faith.
Where the Respondent is in default, the panel is to proceed to a decision on the complaint (see paragraph 14(a) of the Rules). The panel must still examine whether the Complaints meet the conditions set forth in paragraph 4(a) of the Policy. It may draw such inferences as it deems appropriate from the Respondent's failure to file its Response in due time.
i) Identity or Confusing Similarity
The panel is satisfied that the Complainant holds valid rights in the trademarks MARIE CLAIRE and MARIE-CLAIRE and that such trademarks predate the registration of the disputed domain name. It also appears that such trademarks have been internationally registered in many countries of the world, as well as the United States of America.
If the domain name at dispute is not identical to the trademarks held by the Complainant, it is very similar to them. The domain name at stake is made up of the combined words composing the trademark of the Complainant followed by a descriptive addition, "magazine". This descriptive term actually refers directly to the original and main object identified by the trademark, i.e. the Marie Claire magazine. Instead of being a mere addition without significance from the perspective of this comparison, this addition reinforces the likelihood of confusion with the trademark held by the Complainant.
Similar conclusions were reached in the <geomagazine.com> case cited by the Complainant (Prisma Presse v. BUYDOMAINS.COM, WIPO Case No. D2001-1073, p.4), as well as in the <washingtonianmagazine.com> case (Washington Magazine, Inc. v. dannyBOY, Inc., WIPO Case No. D2002-0514, p.3) which bears a number of similarities with the present case.
The circumstance that the space between Marie and Claire was suppressed is a minor departure from the trademark owing to the constraints of the internet addressing scheme. It does not create any significant difference with the trademark. The record shows that all domain names held by the Complainant have been registered under the same constraints (<marieclaire.com>, <marieclaire.fr>, <marieclaire.co.uk>, <marieclaireon.com.br>,<marieclaire.com.tr>). In its non-generic elements, the domain name is phonetically identical to the trademark.
It is a well-settled principle that the addition of a generic top level domain to the trademark does not, in itself, reduce the risk of confusion between the domain name and the trademark owned by the Complainant.
As a result, the Sole Panelist finds that the domain name is confusingly similar to the trademarks held by the Complainant.
(ii) Legitimate Interest
The onus of proving a negative such as the absence of legitimate interest of the domain name holder, shifts to the Respondent once prima facie evidence of absence of legitimate interest is given. The Respondent may then demonstrate that the domain name registration was (i) for the bona fide offering of goods or services, (ii) justified by the fact that the organization was commonly known by the domain name, or (iii) for the purpose of noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark (see paragraph 4(c) of the Policy).
The Complainant's argumentation implies that the Respondent does not have any right or title in its trademark. It can, therefore, be assumed that no license had been granted by the Complainant to the Respondent with respect to the trademark. On the other hand, the Respondent does not claim to have any legitimate interest within the meaning of paragraph 4(c) of the Policy.
Under the present circumstances, the mere redirection of a domain name to an anti-abortion web site could definitely not be held as a legitimate critique (see for instance Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No. D2001-1121; Société Accor c. M. Philippe Hartmann, OMPI Dossier No. D2001-0007). Such redirection to a web site, the content of which denies in radical terms a woman's freedom to control her own body, will be offensive to most readers of a women's magazine. As such and in the absence of any serious argumentation from the Respondent to the contrary, it can only be seen as an attempt to tarnish the Complainant's trademark and reputation.
The Sole Panelist is thus satisfied that the Respondent could not avail itself of any legitimate interest in the domain name at issue.
iii) Bad Faith
Marie Claire is a well known magazine, perhaps less in the United States than in Europe. As such it is a prime target for cybersquatters.
The name of the Respondent "Buy this Domain", its e-mail address Dom4Sale@aol.com, the steps taken by the Respondent consisting in redirecting all links to an anti abortion web site and in offering the domain name for sale, confirm the main goal of the Respondent which is to resell the domain name to its legitimate owner. The link with an existing web site containing materials offensive to most women reading Marie Claire operates as an incentive for the Complainant to act swiftly, thereby increasing the likelihood of a transaction. The price requested may not be especially high as compared to certain demands of cybersquatters. It is, nevertheless, four to five times the cost of a registration.
These activities typically match the conditions of paragraph 4(b)(i) of the Policy. The domain name <marieclairemagazine.com> was registered primarily for the purpose of selling the domain name registration to the Complainant who is the owner of the trademark for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
The Sole Panelist finds that the domain name at issue was registered and used in bad faith.
In conclusion, the Sole Panelist finds that the domain name at issue is confusingly similar to the trademark held by the Complainant, that the Respondent does not have any legitimate interest in such domain name and that the registration and usage of such domain name was in bad faith.
In accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the domain name at issue, <marieclairemagazine.com> be transferred to the Complainant, Marie Claire Album S.A..
Pierre O. Kobel
Dated: September 4, 2002