Advance Magazine Publishers, Inc. v. Aiyi Technologies Co., Ltd

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:

Trademark

Class

Reg. No.

Reg. Date

VOGUE

63

(China)

76000

July

15, 1977

VOGUE

25

76001

July

15, 1977

VOGUE

63

(China)

97264

September

29, 1979

VOGUE

42

1287356

June

21, 1999

VOGUE

25

1288543

June

28, 1999

VOGUE

41

1299845

July

28, 1999

VOGUE

03

1516302

February

7, 2001

VOGUE

41

1779806

May

28, 2002

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

A. Complainant

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:

<vogue.com>

<vogue.co.uk>

<vogueparis.com>

<vogue.de>

<vogue.es>

<vogue.it>

<vogue.ru>

<vogue.com.au>

<vogue.co.jp>

<vogue.co.kr>

<vogue.com.tw>

<voguehellas.gr>

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

<vogueaustralia.com>.

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

domain name.

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.

B. Respondent

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

trademark VOGUE.

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

charge.

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.

7. Decision

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

Presiding Panelist

Yong Li

Panelist

Clive L. Elliott

Panelist

Dated: September 2, 2003

More cases by this complainant

• Advance Magazine Publishers, Inc. v. Models USA Inc. — D2002-0907 · voguebritain.com, voguecanada.com, vogueengland.com · Transfer · 19 Dec 2002
• Advance Magazine Publishers, Inc. v. Buy This Domain — D2002-0803 · vougemag.com · Transfer · 01 Nov 2002
• Advance Magazine Publishers, Inc. v. Vogue Xo — D2002-0797 · voguexo.com · Transfer · 01 Nov 2002