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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Runway Beauty, Inc. v. Errol Z. Hernandez

Case No. D2009-0762

1. The Parties

The Complainant is Runway Beauty, Inc., Arizona, United States of America, acting pro se.

The Respondent is Errol Z. Hernandez, Toronto, Canada, acting pro se.

2. The Domain Names and Registrar

The disputed domain names <runwaymagazine.com> <runwaymagazine.net> and <runwaymagazine.org> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 10, 2009. On June 10, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On June 10, 2009, Network Solutions, LLC transmitted by email to the Center its response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 17, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also notified the Complainant in this email that the Complaint was administratively deficient. In response, the Complainant filed an amendment to the Complaint on June 18, 2009. 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" or "UDRP"), 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").

The Respondent requested an extension to file a response on June 18, 2009, prior to the Center formally notifying the Respondent of the Complaint. The Complainant opposed the Respondent`s extension request on June 18, 2009.

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 June 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2009. The Response was filed with the Center on July 9, 2009 and as such it was not necessary to determine whether an extension should be granted to the Respondent.

The Center appointed John Swinson as the sole panelist in this matter on July 17, 2009. The Panel finds that it was properly constituted. 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.

Both parties submitted further emails to each other and the Centre after the submission of the Response on July 9 and 10, 2009. The Panel has decided to accept these emails as Supplemental Filings.

4. Factual Background

The disputed domain name <runwaymagazine.com> was registered by the Respondent on March 4, 1999, while the other two disputed domain names <runwaymagazine.org> and <runwaymagazine.net> were registered on April 8, 1999.

The websites operating from all disputed domain names are almost identical. At the top of each page is a header: "www.runwaymagazine.org [or other disputed domain name] is a mini web portal leading to www.runwayvista.com". There is also the following disclaimer at the footer of each website:

"All brands, products, services, trademarks, service-marks and registered trademarks mentioned on this site are the property of their respective owners.

The Domain Names Runwaymagazine.org [or other disputed domain name] and runwayvista.com are not related to any other company, product or service having similar names".

By clicking on a link, an Internet user can then be redirected to either:

TheBlog@RunwayVista - "It`s about Style, Fashion, Art, Entertainment and more". This contains general information and stories relating to fashion and beauty, and contains various links to third party websites.

or

TheRunway@RunwayVista - "Internet Social Networking … share your fashion sense. Coming soon".

According to the Complainant`s website (at "www.runwaymagazine.us"), the Complainant produces and distributes a print magazine to eight countries around the world, including Canada, Mexico, France, England, Italy, Spain, and Australia. The main focus of the magazine is fashion, beauty and entertainment. People can also subscribe to the magazine online, via the Complainant`s website.

5. Parties` Contentions

A. Complainant

The Complainant makes the following contentions:

RUNWAY MAGAZINE is a registered trade mark in the United States of America (Trade mark registration no. 3,586,631 for RUNWAY MAGAZINE word mark).

The disputed domain name <runwaymagazine.com> is an exact match of the Complainant`s trade mark. The confusion of consumers (between the ".us" and ".com" TLDs) has caused lost communications and revenue for the Complainant. Ownership of the disputed domain names also provides the Respondent with the opportunity to post fake news stories and poor reviews which will destroy the Complainant`s reputation.

The Complainant`s Runway Magazine business has existed since 1997, and is a fashion news network affiliated with ABC/Disney. The Complainant shares its news with many major news networks.

Runway Magazine currently owns the following domains: <runwaymagazine.us>, <runwaymagazine.biz> and <runwaymagazine.info>. Runway Magazine is distributed in eight countries by Kable Distribution, including Canada where the Respondent resides. The magazine is sold for USD5.99, and is an audited news source.

The Respondent is using the trade mark to receive profit, and is causing harm to the reputation of the magazine. The Respondent is using the Complainant`s name and using it to redirect to other sites, in an attempt to make money.

The disputed domain names were registered in 1999 and the Respondent has been cyber-squatting since that date, with no legal business being run from the websites.

The Respondent`s websites demonstrate that the Respondent has no rights or legitimate interests.

The disputed domain names were renewed by the Respondent after a cease and desist letter was sent by the Complainant in 2009. The Respondent was also asked in 2008 to stop using the Complainant`s name, which he refused to do.

B. Respondent

The Respondent makes the following contentions:

The Complainant is attempting to illegitimately acquire ownership of the disputed domain names, because it wishes to position its "Runway Magazine" internationally. "Runway Magazine" is a fashion focused publication that was launched into international print circulation last year. The investment the Complainant has made in launching this magazine internationally would be improved if the Complainant owned the three disputed domain names (as these are the three most popular international Top Level Domain Names). There is also growing international interest in anything bearing the name "Runway".

The best selling 2003 novel "The Devil Wears Prada" makes prominent use of the name "Runway Magazine", which is a high-end international fashion magazine. Since the release of the movie by the same name, "Runway Magazine" has become popular in print, audio and video media. The popularity of "Runway Magazine" as a name is visible on the Internet. There are many websites, blogs, forums and Wikipedia articles making reference to "Runway Magazine" in a way which is unrelated to the original novel or movie, but which are related to art, fashion and lifestyle.

The Respondent has held the disputed domain names continuously since 1999. Prior to registering the names, the Respondent searched the Internet to see if anyone was using the name "Runway Magazine", and this did not return any exact hits. At this time, the Respondent could not see that anyone was using "Runway Magazine" on the Internet, in relation to a publication or website of any kind. The Respondent also registered the domain name <runwaymagazine.ca> in 2001.

The Respondent registered the disputed domain names in good faith, with the intention to use the names in two areas: 1. for websites that contain information about clothing and fashion, 2. for a website that would showcase interesting airport architecture (from a runway perspective). The Respondent had no intention of using the disputed domain names in relation to print-related publication.

The Respondent started using two of the disputed domain names in 2008, live on the Internet - <runwaymagazine.com> was used for emailing, and <runwaymagazine.net> was used for hosting the development of a social networking website. This took a long time, because the Respondent was developing skills in art and technology, and learning about systems and business models. The Respondent was also accumulating the personnel support needed to implement the projects. The email service was later removed as a practical precaution to minimize issues with the Complainant.

The Respondent incorporated "RunwayMagazine.com, Inc" nationally in Canada on August 11, 2008. The Respondent intends this company to be the vehicle by which it performs projects in relation to the disputed domain names.

The Respondent`s websites do not mention the Complainant, its trade marks, products or services and intentionally do not look like the Complainant`s websites. There is a disclaimer which informs Internet users about the site they have reached. The Respondent has not many any money from the domains, has not interfered with the Complainant`s business, and has not tarnished the Complainant`s trade marks.

RUNWAY MAGAZINE was not a registered trade mark in 1999 at the time of registration of the disputed domain names. This mark was only filed on July 31, 2008, and registered on March 10, 2009. The registration of the disputed domain names preceded the Complainant`s trade mark by over nine years.

The Complainant`s registered trade mark for RUNWAY MAGAZINE states that the first use of this mark was on January 1, 2002, while first use in commerce was May 1, 2007. However in the Complaint, the Complainant refers to the "Runway Magazine" business commencing in 1997. This is inconsistent with the information recorded on the trade marks register. Even if the Complainant was using "Runway Magazine" in business since 1997, the Complainant did not have worldwide or exclusive rights to that name between 1997 and 2008.

The Complainant was also assigned two ISSN numbers for "Runway Magazine" in 2008 (in print form, and eJournal/eMagazine form). The information relating to these ISSN numbers includes a reference to "Runway Beauty Magazine" as an alternative title, and to the disputed domain name <runwaymagazine.com> as an online resource. The Complainant has provided misleading information in the ISSN registration, and is aiding the confusion of Internet users who attempt to access the Complainant`s magazine online.

According to the Complainant`s website, "Runway Magazine" was distributed as a PDF file in 2003, and for its first four years. It was picked up by Kable Distribution in October 2007, "only 3 months after the first print issue went to circulation". There is evidence that the premiere issue of "Runway Beauty Magazine" was launched in print form on June 8, 2008, and that it went on sale at Barnes and Noble in the United States on June 23, 2008.

The Complainant registered the domain name <runwaybeauty.com> on July 7, 2004, and a US trade mark application for RUNWAY BEAUTY on August 20, 2007. The application for the RUNWAY MAGAZINE mark followed in July 2008.

On July 31, 2008, the Complainant contacted the Respondent for the first time, and the parties spoke on August 4, 2008. No complaints were made about the registration of the disputed domain names at that time.

There is confusion in press releases and publicity information as to whether the Complainant`s magazine is called "Runway Beauty Magazine" or "Runway Magazine" (and it is sometimes just called "Runway"). In 2008 issues, the title is "Runway Beauty Magazine", however other items refer to the publication as "Runway Magazine".

6. Discussion and Findings

To succeed in its claim, the Complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the domain name registered by the Respondent 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 interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving these elements lies with the Complainant.

A. Identical or Confusingly Similar

Runway Beauty is the owner of United States registered trade mark number 3,586,631 for RUNWAY MAGAZINE. This mark was filed on July 31, 2008, and registered on March 10, 2009.

The name of the owner of the trade mark (Runway Beauty) differs slightly to the Complainant in these proceedings (Runway Beauty, Inc.), however the Panel accepts that these are in fact the same entities.

The registered trade mark of RUNWAY MAGAZINE is identical to all three disputed domain names (ignoring the TLD suffix).

Accordingly, the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

To succeed on this element, the Complainant must make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the Respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

The Complainant has put forward minimal evidence of the Respondent`s lack of rights or legitimate interests. In short, the Complainant contends that the Respondent has been using the disputed domain names for cyber squatting purposes since 1999, with no legal business being operated from the corresponding websites. The Complainant points to the content of the Respondent`s websites to try and establish lack of rights or legitimate interests.

In response, the Respondent contends that it has made use of the disputed domain names (or least planned to) prior to notice of this dispute, and is making a legitimate non-commercial use of the disputed domain names without intent to misleadingly divert consumers or tarnish the Complainant`s trade mark.

By the Respondent`s own admission, it did not start any business from the disputed domain names until 2008, almost ten years after it first registered the names. The Respondent contends that while it always had plans to develop the websites, he was constrained by personnel resources and skill shortages. The Respondent`s plans supposedly involved websites containing information on fashion, but also websites relating to airport runways.

It was also in early to mid 2008 when the parties first made contact, and a dispute arose concerning ownership of the disputed domain names.

Due to the significant amount of time in which the Respondent held the disputed domain names without any development, the timing of the Complainant`s filing of the RUNWAY MAGAZINE trade mark application, and the timing of the Respondent`s eventual launch of its websites, the Panel infers that the Respondent only began to develop the websites after receiving notice of an impending dispute from the Complainant. On balance, based on the lack of evidence submitted by the Respondent, the Panel does not accept that the Respondent was making a bona fide offering of goods and services in relation to the disputed domain names, prior to being contacted by the Complainant.

Further, the Panel is not entirely satisfied that the Respondent`s offering of fashion and beauty news from its websites would constitute a bona fide offering of goods and services. The articles currently offered on the Respondent`s website appear very similar in nature to articles that would commonly be found in a fashion magazine such as Runway Magazine. As this content was launched around the same time as the dispute arose, it is difficult for the Panel to believe that the similarity of content is coincidental. However, as it is not necessary to determine this issue, the Panel does not make a conclusive finding on this point.

On the evidence before it, the Panel is not willing to accept that the Respondent`s use of the disputed domain names falls under paragraph 4(c)(iii) of the Policy. While the Respondent`s websites do not currently appear to be profit driven, the Panel cannot say with certainty that the Respondent is using the domain names without intent to misleadingly divert customers. This is because the content was established at a time which is close in proximity to the time when the Complainant raised concerns with the Respondent regarding the disputed domain names.

In the Panel`s view, the disclaimer utilized by the Respondent is not sufficient to prevent confusion arising amongst Internet users. It is not a disclaimer which specifically mentions the Complainant, and as the disputed domain names match the Complainant`s trade marks exactly and the website contains content similar to the Complainant`s, Internet users are likely to be confused despite the disclaimer.

Accordingly, the second element has been met.

C. Registered and Used in Bad Faith

The Panel has difficulty accepting that the Respondent registered and used the disputed domain names in bad faith, due to the timing of the following circumstances:

- the Respondent registered the disputed domain names in 1999. This is almost ten years prior to the Complainant`s trade mark becoming registered, and nine years prior to the Complainant filing its RUNWAY MAGAZINE trade mark application.

- the Complainant claims that it operated the Runway Magazine business since 1997 (and the Complainant`s website states that it was an extremely successful Internet magazine from 1997 to 2007). However the Complainant has provided no evidence of this fact. The Complainant`s primary Internet presence for Runway Magazine appears to be via the website "www.runwaymagazine.us". Expanded second-level ".US" domains were not launched until April 24, 2002, so the Complainant could not have been running its "successful Internet magazine" from this location prior to 2002. If it was providing a magazine prior to that date (perhaps from the "www.vipsalon.com" website as mentioned in the Supplemental Filing), it has failed to provide sufficient evidence of that fact, and evidence of use of the trade mark RUNWAY MAGAZINE from that time.

- the date of commencement of the Runway Magazine business provided by the Complainant is also inconsistent with the dates of first use in the Complainant`s trade mark registration. The earliest date of use set out in the Complainant`s trade mark registration of the RUNWAY MAGAZINE trade mark is January 1, 2002, with first use in commerce being May 1, 2007. This indicates to the Panel that RUNWAY MAGAZINE was not significantly used by the Complainant in a printed or online publication until 2007, well after the Respondent first registered the disputed domain names.

- other domain names and trade marks related to the Complainant`s business (such as the RUNWAY BEAUTY trade mark and <runwaybeauty.com> domain name), were not filed or registered until several years after the disputed domain names were registered.

In light of the above factors, the Panel finds that there is no evidence before the Panel to demonstrate that the Respondent was aware or should have been aware of the Complainant or its magazine business at the time it registered the disputed domain names. The record before the Panel also shows that the Complainant`s use of RUNWAY MAGAZINE as a trade mark, only became significant in or around 2007, which is well after the registration dates of the disputed domain names.

While the Respondent has admittedly held the disputed domain names for a significant period of time without apparent use, the Respondent has made attempts to provide content for its websites, in accordance with his original intentions. The Panel therefore does not consider that the Respondent has been passively holding the disputed domain names in circumstances sufficient to establish registration and use in bad faith for the purpose of the Policy.

Accordingly, the Complainant has failed to establish the third element.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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John Swinson
Sole Panelist

Dated: July 28, 2009