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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers, Inc. v. Aiyi Technologies Co., Ltd
Case No. D2003-0526
1. The Parties
The Complainant is Advance Magazine Publishers, Inc., New York, United States of America, represented by Shirley Kwok, China.
The Respondent is Aiyi Technologies Co., Ltd, Xiamen, Fujian, China.
Based on the facts presented by the Complainant, the Panel finds that there are such connections between Aiyi Technologies Co. Ltd., CSG, Sam Chen and Chen Jiang Feng that all these individuals/companies will be considered as Respondent in this decision.
2. The Domain Name and Registrar
The disputed domain name <voguechina.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2003. On July 4, 2003, the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the domain name at issue. On July 15, 2003, eNom Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 9, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2003.
The Center appointed Peter G. Nitter, Yong Li and Clive L. Elliott as Panelists in this matter on August 19, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of the trademark VOGUE.
The Complainant owns numerous trademark registrations for VOGUE in connection with various classes of goods and services worldwide, ref Annex R to the Complaint.
In China, where Respondent is residing, the Complainant’s affiliated company Les Publications Conde Nast S.A. has more than ten registrations for the mark VOGUE. Details of some of Complainant’s registrations are as follows:
The Complainant noted in June 2002, the registration of the disputed domain name with Network Solutions Inc. by Sam Chen.
On June 14, 2002, Counsel for the Complainant issued a cease and desist letter to Sam Chen explaining the Complainant’s rights and requesting cancellation or transfer of the domain name, ref. Annex D to the Complaint.
Sam Chen replied the same day and refused to give up the domain name, claiming that he had not heard of the Complainant’s trademark, or VOGUE magazine. He also mentioned that he had other websites, including "www.modelsky.com" and "www.yestuit.com." References to and reproductions of Complainant’s VOGUE magazines were found on these sites, ref. Annex F to the Complaint.
On July 6, 2003, Sam Chen asked for US$3,000 as a compensation for his loss for transferring the disputed domain name. The amount was subsequently lowered to US$1,500 and then to US$600. Ultimately, Sam Chen agreed to remove the copyright infringing materials from his websites and not to use the disputed domain name and to give it up by cancellation or transfer at no costs, ref. Annex H and I to the Complaint.
During the preparation of the transfer the Registrar of the disputed domain name was changed to OnlineNic, Inc., ref. Annex J to the Complaint.
Counsel for the Complainant received emails from one China Star Group (CSG) a United Arab Emirates company on September 20 and 21, 2002, claiming that Sam Chen was only their ex-employee, that Sam Chen had left its employment, that CSG was the true owner of the domain name and that transfer was no longer free of charge and that negotiations should be conducted with CSG, ref. Annex K to the Complaint.
There was another change on October 14, 2002, of the Registrar to eNom Inc. with a change of the Registrant to CSG, ref Annex M to the Complaint.
On October 17, 2002, CSG asked for US$3,000 as compensation for their loss if transferring the domain name, ref Annex N to the Complaint.
In January 2003, the Complainant noted another transfer of the domain name to Aiyi Technologies Co. Ltd., ref. Annex O to the Complaint.
When the Complainant made a phone call to Aiyi Technologies Co. Ltd on February 21, 2003, the person answering identified himself as Sam Chen.
The website "www.aiyi.com" showed on January 30, 2003 the same as that of "www.yesuit.com." It is also stated on the site that the copyright of the materials thereon belonged to "yesuit.com," ref. Annex P and F to the Complaint.
On June 27, 2003, a further check of the eNom Inc. Whois database showed that the name of Sam Chen again appeared under the name of the Registrant, ref. Annex Q to the Complaint.
5. Parties’ Contentions
The Complainant’s trademark VOGUE is internationally famous, and the Complainant is one of the world’s most successful magazine publishers. Through its unincorporated division, The Conde Nast Publications Inc., the Complainant publishes such well-known magazines as VOGUE, Glamour, The New Yorker, Self, Vanity Fair and GQ.
Launched in 1892, VOGUE is the world’s major fashion and style magazine for women. The U.S. edition of VOGUE reaches an average monthly audience of over 1,100,000 and is published in: England, France, Germany, Spain, Brazil, Italy, Greece, Russia, Korea, Taiwan, Japan and Australia.
In its decision against the registration of the trademark "V IN VOGUE"
in an opposition proceeding, China’s Trademark Review Adjudication Board ruled
in a decision on April 26, 2001, that: "although the word "VOGUE"
is a general English word, the (Complainant) has been using its mark and obtained
registration thereof over the world. Through extensive use, registration and
promotion, the (Complainant) has established its reputation and acquired distinctiveness
of trademark VOGUE."
The Complainant operates through Conde Nast the following domain names:
Millions of consumers worldwide instantly recognize the name and mark VOGUE
and associate the mark with the Complainant’s upscale fashion and style publications
and online services.
Given the worldwide reputation of the Complainant’s VOGUE mark consumers who
view the disputed domain name will instantly recognize the VOGUE trademark and
assume that it may be linked to the other VOGUE websites and/or to the goods
and services provided under the VOGUE mark.
The disputed domain name consists of the Complainant’s identical trademark
VOGUE. The other part of the domain name "china" is simply a generic
geographical indication, ref. Advance Magazine Publishers Inc. v. Marcellod
Russo, WIPO Case No. D2001-1049 regarding
Other WIPO panels have also found that "the addition of a country name
does not avoid confusion." Reference is made to Advanced Magazine Publishers
Inc. v. Models USA Inc., WIPO Case No.
D2002-0907. In this case the domain names <voguebritain.com>, <voguecanada.com>,
<vogueengland.com>, <voguefrance.com> and <voguegermany.com>
confusingly similar to the Complainant’s VOGUE trademark.
The disputed domain name is confusingly similar to the VOGUE trademark.
The Respondent has no rights or legitimate interests in the disputed
domain name. The Complainant never granted the Respondent the right to use or
register the VOGUE mark, either in connection with a domain name registration
or a bona fide offering of goods and services or for any other reason.
The Respondent has not been commonly known by the disputed domain name.
No proof has ever been provided by the Respondent to show that it has any legitimate
rights or interest in the disputed domain name. The Respondent has on the contrary
implicitly agreed that it does not have legitimate rights therein and has agreed
at one stage to cancel the domain name without charge.
The domain name is registered and is being used in bad faith.
The Respondent Knew of the Complainant’s Vogue Trademark when Registering the
Disputed Domain Name
The Complainant refers to prior WIPO panels which have found that when the
trademarks concerned were famous, the Respondents should have known of the Complainants’
trademarks when registering the disputed domain names and hence the registration
was made in bad faith. In this case, given the longstanding use and fame of
the Complainant’s VOGUE trademark, the Respondent should have known of the same
when registering the disputed domain name.
As reproductions of Complainant’s VOGUE magazines were found on the Respondent’s
websites "www.yesuit.com" and "www.aiyi.com" it is inconceivable
that Respondent was not aware of the VOGUE trademark when registering the disputed
The domain name was registered or acquired primarily for the purpose of selling
or transferring the domain name to the Complainant for valuable consideration
in excess of out-of-pocket costs directly related to the domain name.
The Complainant states under this section that the domain name does not lead
to a website or other on-line presence. The Panel entered the web page "www.voguechina.com"
and found that this has now changed, as the domain name leads to a website with
a list of different factories and links to the websites of these factories.
Both Sam Chen and CSG agreed to transfer the disputed domain name to the
Complainant against a compensation which started out to be US$3,000 and was
subsequently lowered when this was not accepted by Complainant. No details or
documentary proof was ever provided by Respondent to show that the amounts it
asked for are only its out-of-pocket costs. The Respondent only claimed to have
invested a lot of money and labour in building the website.
The domain name was registered primarily for the purpose of transferring it
to the Complainant for valuable consideration in excess of out-of-pocket costs
directly related to the domain name.
Previous Cybersquatting Activities of the Respondent
In March 2002, the Complainant noted the registration of the domain name
<china-vogue.com>. The Registrant of the domain name is called Chen Jiang Feng.
After negotiations with Chen Jiang Feng, the said domain name was
finally transferred to the Complainant for US$650. During negotiations with
Sam Chen and CSG regarding this domain name, several circumstances strongly
indicated that Sam Chen was in fact Chen Jiang Feng:
(i) Chen Jiang Feng’s Chinese name appears on CSG’s website at "www.dibai.com,"
ref. Annex Y to the complainant. Chen Jiang Feng’s mobile number as
stated on the website was exactly the same as Sam Chen’s, ref. Annex C
and Q to the complaint.
(ii) When counsel for the Complainant called CSG’s branch office in China on
October 9, 2002, Ms. Lin Yimin confirmed that the Chinese
name of Sam Chen was Chen Jiang Feng.
(iii) On the printout that shows that the disputed domain name did not point
to any website ref. Annex V to the Complaint, it is stated that one may
try visiting "www.jiangfeng.net."
It is very likely that Sam Chen and Chen Jiang Feng are the
same person. This is further proof that Sam Chen is aware of the Complainant.
As evidenced by the events described under section 4 above, notwithstanding
the changes of registration details of the disputed domain name, the connections
among Sam Chen, CSG and the Respondent are evident. The changes are merely
part of tricky maneuverings, probably to make it difficult for the Complainant
to take any legal action. The control of the domain name has never been changed,
and lies with Sam Chen and/or CSG.
The registration and use of the domain name cannot possibly be in good faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Because the Respondent has defaulted in providing a response to the allegations
of the Complainant, the Panel is directed to decide this administrative proceeding
on the basis of the complaint (Rules, Paragraph 14(a)), and the Panel may
draw such inferences from the Respondent’s default as the Panel finds appropriate
(Rules, Paragraph 14(b)).
A. Identical or Confusingly Similar
The domain name in question is <voguechina.com>.
Complainant has provided evidence that Complainant is the legitimate holder
of the VOGUE trademark. The trademark has been registered in China since 1977,
and numerous registrations are made of the trademark in various countries throughout
the world. The Panel determines that the Complainant’s rights in the trademark
arose prior to the Respondent’s registration of the disputed domain name, on
May 27, 2002.
The addition of a generic term like China to a well-known trademark in a domain
name does not eliminate confusion. The Panel refers to the WIPO cases presented
by Complainant under section 5 A above.
Since the mark VOGUE is well known and since the mark is incorporated in its
entirety in the disputed domain name and that the disputed domain name is a
combination of the identical prefix VOGUE and the generic suffix "china,"
Internet users are likely to be misled or confused as to Complainant’s relationship
to, affiliation with, or endorsement of, the websites which can be located through
the domain name.
Panel decides that the disputed domain name is confusingly similar with the
B. Rights or Legitimate Interests
In an email of June 14, 2003, from the Respondent to counsel of the
Complainant, the Respondent states that:
"We operated a studio of vogue design for years. And the name of the studio
is ‘voguechina.’ It is well known in my city."
The Complainant does not accept this explanation and asserts that the Respondent
has no rights or legitimate interests in respect of the domain name because
the Respondent does not have any VOGUE trademark registration and because the
Complainant has not authorized the Respondent to register or use the VOGUE mark.
The Panel finds that Respondent’s explanation regarding the name of the studio
is irrelevant to this case as the domain name is not used in connection with
the studio. The domain name leads to a website with a list of different factories
and links to the websites of these factories. Even if it had been used only
in connection with any studio, Respondent has not presented any proof of the
use of the name "voguechina" in the way it is stated in his email.
Further, Respondent has implicitly agreed that it has no legitimate interests
as Respondent at one stage agreed to cancel the domain name voluntarily without
The Panel concludes that that the Respondent has no rights or legitimate interests
in respect of the domain name.
C. Registered and Used in Bad Faith
In the mentioned email of June 14, 2003, from the Respondent to counsel
of the Complainant the Respondent states that:
"Moreover, we never heard of your trademark, your product, and even your
company before your letter. We understand that the word "Vogue" is
a generic word and the prefix "china" is commonly used in network."
The Panel finds this hard to believe, as the well-known VOGUE trademark has
a long history and was registered in China in 1977. The Panel finds that the
registration has been made in bad faith as the Respondent is unlikely (on a
reasonable objective assessment) to have been unaware of the fact that VOGUE
is a famous trademark.
The Panel finds that the domain name also was used in bad faith. The Respondent
offered the domain name for the price of US$3,000 on two occasions in reply
to the Complainant’s representative. The first time Respondent offered a discount
when the Complainant would not accept the first price offered for the domain
name. The price was reduced from US$3,000 to US$1,500 and finally to US$600.
The Panel finds that the Respondent did register the domain name for the purpose
of selling it and actively tried to do so, albeit without success.
On the basis of the proof presented by the Complainant the Panel finds that
it is most likely that Chen Jiang Feng and Sam Chen is the same
person. The Panel infers from this that Sam Chen was aware of the Complainant
at the time of registering the domain name. This also shows bad faith as the
Respondent has tried to hide its real identity from the Complainant, and because
the Respondent has been involved with previous cybersquatting activities as
he registered the domain name <china-vogue.com> which was finally transferred
to the Complainant for approximately US$650.
The Panel decides that Respondent’s bad faith has been established.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the
Policy and 15 of the Rules, the Panel orders that the domain name, <voguechina.com>
be transferred to the Complainant.
Peter G. Nitter
Clive L. Elliott
Dated: September 2, 2003