chapter 15 ipr

8/11/2019 Chapter 15 IPR

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Chapter 15

DOMAIN NAMES

The TRIPS Agreement was negotiated between 1984 and 1995. As a result, domain

name disputes had not been contemplated and are not addressed in that agreement.

A. THE UDRP DISPUTE PROCESS

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

As Approved by ICANN on October 24, 1999

1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the Policy) has beenadopted by the Internet Corporation for Assigned Names and Numbers (ICANN), isincorporated by reference into your Registration Agreement, and sets forth the terms and

conditions in connection with a dispute between you and any party other than us (the registrar)over the registration and use of an Internet domain name registered by you. Proceedings underParagraph 4 of this Policy will be conducted according to the Rules for Uniform Domain NameDispute Resolution Policy (the Rules of Procedure), which are available atwww.icann.org/udrp/udrp-rules-24oct99.htm, and the selected administrative-dispute-resolutionservice provider's supplemental rules.

2. Your Representations. By applying to register a domain name, or by asking us to maintain orrenew a domain name registration, you hereby represent and warrant to us that (a) the statementsthat you made in your Registration Agreement are complete and accurate; (b) to your knowledge,the registration of the domain name will not infringe upon or otherwise violate the rights of anythird party; (c) you are not registering the domain name for an unlawful purpose; and (d) youwill not knowingly use the domain name in violation of any applicable laws or regulations. It isyour responsibility to determine whether your domain name registration infringes or violatessomeone else's rights.

3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes todomain name registrations under the following circumstances:a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronicinstructions from you or your authorized agent to take such action;b. our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction,requiring such action; and/orc. our receipt of a decision of an Administrative Panel requiring such action in any administrativeproceeding to which you were a party and which was conducted under this Policy or a laterversion of this Policy adopted by ICANN. (See Paragraph 4(i) and (k) below.)We may also cancel, transfer or otherwise make changes to a domain name registration inaccordance with the terms of your Registration Agreement or other legal requirements.

4. Mandatory Administrative Proceeding.


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This Paragraph sets forth the type of disputes for which you are required to submit to amandatory administrative proceeding. These proceedings will be conducted before one of theadministrative-dispute-resolution service providers listed at www.icann.org/udrp/approved-providers.htm (each, a Provider).a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in

the event that a third party (a complainant) asserts to the applicable Provider, in compliancewith the Rules of Procedure, that(i) your domain name is identical or confusingly similar to a trademark or service mark in whichthe complainant has rights; and(ii) you have no rights or legitimate interests in respect of the domain name; and(iii) your domain name has been registered and is being used in bad faith.In the administrative proceeding, the complainant must prove that each of these three elementsare present.b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), thefollowing circumstances, in particular but without limitation, if found by the Panel to be present,shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain nameprimarily for the purpose of selling, renting, or otherwise transferring the domain nameregistration to the complainant who is the owner of the trademark or service mark or to acompetitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or(ii) you have registered the domain name in order to prevent the owner of the trademark orservice mark from reflecting the mark in a corresponding domain name, provided that you haveengaged in a pattern of such conduct; or(iii) you have registered the domain name primarily for the purpose of disrupting the business ofa competitor; or(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain,Internet users to your web site or other on-line location, by creating a likelihood of confusionwith the complainant's mark as to the source, sponsorship, affiliation, or endorsement of yourweb site or location or of a product or service on your web site or location.c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name inResponding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 ofthe Rules of Procedure in determining how your response should be prepared. Any of thefollowing circumstances, in particular but without limitation, if found by the Panel to be provedbased on its evaluation of all evidence presented, shall demonstrate your rights or legitimateinterests 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, thedomain name or a name corresponding to the domain name in connection with a bona fideoffering of goods or services; or(ii) you (as an individual, business, or other organization) have been commonly known by thedomain name, even if you have acquired no trademark or service mark rights; or(iii) you are making a legitimate noncommercial or fair use of the domain name, without intentfor commercial gain to misleadingly divert consumers or to tarnish the trademark or service markat issue.


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d. Selection of Provider. The complainant shall select the Provider from among those approvedby ICANN by submitting the complaint to that Provider. The selected Provider will administerthe proceeding, except in cases of consolidation as described in Paragraph 4(f).e. Initiation of Proceeding and Process and Appointment of Administrative Panel. The Rules ofProcedure state the process for initiating and conducting a proceeding and for appointing the

panel that will decide the dispute (the Administrative Panel).f. Consolidation. In the event of multiple disputes between you and a complainant, either you orthe complainant may petition to consolidate the disputes before a single Administrative Panel.This petition shall be made to the first Administrative Panel appointed to hear a pending disputebetween the parties. This Administrative Panel may consolidate before it any or all such disputesin its sole discretion, provided that the disputes being consolidated are governed by this Policy ora later version of this Policy adopted by ICANN.g. Fees. All fees charged by a Provider in connection with any dispute before an AdministrativePanel pursuant to this Policy shall be paid by the complainant, except in cases where you elect toexpand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) ofthe Rules of Procedure, in which case all fees will be split evenly by you and the complainant.

h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in theadministration or conduct of any proceeding before an Administrative Panel. In addition, we willnot be liable as a result of any decisions rendered by the Administrative Panel.i. Remedies. The remedies available to a complainant pursuant to any proceeding before anAdministrative Panel shall be limited to requiring the cancellation of your domain name or thetransfer of your domain name registration to the complainant.j. Notification and Publication. The Provider shall notify us of any decision made by anAdministrative Panel with respect to a domain name you have registered with us. All decisionsunder this Policy will be published in full over the Internet, except when an Administrative Paneldetermines in an exceptional case to redact portions of its decision.k. Availability of Court Proceedings. The mandatory administrative proceeding requirements setforth in Paragraph 4 shall not prevent either you or the complainant from submitting the disputeto a court of competent jurisdiction for independent resolution before such mandatoryadministrative proceeding is commenced or after such proceeding is concluded. If anAdministrative Panel decides that your domain name registration should be canceled ortransferred, we will wait ten (10) business days (as observed in the location of our principaloffice) after we are informed by the applicable Provider of the Administrative Panel's decisionbefore implementing that decision. We will then implement the decision unless we have receivedfrom you during that ten (10) business day period official documentation (such as a copy of acomplaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against thecomplainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii)of the Rules of Procedure. (In general, that jurisdiction is either the location of our principaloffice or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of theRules of Procedure for details.) If we receive such documentation within the ten (10) businessday period, we will not implement the Administrative Panel's decision, and we will take nofurther action, until we receive (i) evidence satisfactory to us of a resolution between the parties;(ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copyof an order from such court dismissing your lawsuit or ordering that you do not have the right tocontinue to use your domain name..


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8. Transfers During a Dispute.a. Transfers of a Domain Name to a New Holder. You may not transfer your domain nameregistration to another holder (i) during a pending administrative proceeding brought pursuant toParagraph 4 or for a period of fifteen (15) business days (as observed in the location of our

principal place of business) after such proceeding is concluded; or (ii) during a pending courtproceeding or arbitration commenced regarding your domain name unless the party to whom thedomain name registration is being transferred agrees, in writing, to be bound by the decision ofthe court or arbitrator. We reserve the right to cancel any transfer of a domain name registrationto another holder that is made in violation of this subparagraph..

ADVANCE MAGAZINE PUBLISHERS INC. v. PREMIER MODELS

INTERNATIONAL INC

WIPO Arbitration

Case No. D2013-0757 (2013

The disputed domain name is registered with GoDaddy.com, LLC(the Registrar).The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on April 26, 2013. On April 29, 2013, the Center transmitted by email to the Registrar a request forregistrar verification in connection with the disputed domain name. On April 30, 2013, theRegistrar transmitted by email to the Center its verification response confirming that Respondent

is listed as the registrant and providing the contact details. In response to a notification by theCenter that the Complaint was administratively deficient, Complainant filed an amendedComplaint on May 1, 2013.

The Center verified that the Complaint together with the amended Complaint satisfied the formalrequirements 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 (theSupplemental Rules).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent

of the Complaint, and the proceedings commenced on May 2, 2013. In accordance with theRules, paragraph 5(a), the due date for Response was May 22, 2013. Respondent did not submitany response. Accordingly, the Center notified Respondents default on May 23, 2013.

Complainant publishes Vogue fashion magazine which launched in 1892. The U.S. edition ofVogue reaches an average monthly audience of 1,315,304. Vogue magazine is also published by


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Complainants subsidiaries or through local licensees in United Kingdom of Great Britain andNorthern Ireland (U.K.), France, Italy, Australia, the Russian Federation, China, Germany,

India, Taiwan Province of China, Portugal, Turkey, Spain, Mexico, Japan and Brazil.

In addition to its magazine, Complainant operates www.vogue.com, the online home of U.S.

Vogue. This site features magazine content, photos, designer profiles, lifestyle and culturalinformation as well as ads from third parties. The website of www.vogue.comreceives over 2million unique users per month. Complainant, its subsidiaries and licensees also operate websitesin foreign countries, including France, Italy, the Russian Federation, Japan, Germany, U.K.,India, China, the Republic of Korea and Portugal.

Complainant and/or its wholly owned subsidiaries own over 500 trademark registrations forVOGUE and variations of Vogue. Some of these registrations are:

U.S. Registration No. 1336659, Registered May 21, 1985 for the trademark VOGUE for amagazine;

U.S. Registration No. 103770, Registered April 13, 1915 for the trademark VOGUE forpatterns;

U.K., Registration No. 2226466, registered November 17, 2000 for various goods and services inclasses 16, 35, 36 and 38 for the trademark VOGUE; and

Canada Registration No. TMA561966, Registered May 14, 2002 for the trademark VOGUE formagazines, books and periodicals and for providing fashion and style information via theInternet.

On October 12, 2012, Complainant received an email from a concerned parent of a 19 year oldgirl being recruited by Vogue Fashion Inc. who was attempting to discover whether anyrelationship existed between Complainant and Respondent.

On October 15, 2012, Complainants lawyers sent an email to the email address listed in theWhoIs registration. On October 15, 2012, a representative from Vogue Fashion Models Inc.responded, stating:

We are not using the name Vogue Magazine, the dba for this company is Vogue Fashion Models,Inc. Our attorneys advised us that there is no relation with Vogue Magazine, so there should beno issue. Our customers are aware of this. We will cease and desist from using this name until

this is looked unto further and reverified. We have no desire to use this name if its in fact givesanyone the impression we are Vogue Magazine.

5. Parties Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/


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Respondent has registered a domain name which consists of Complainants identical trademarksVOGUE. Registration of the disputed domain name has caused and will continue to causeconsumer confusion since Fashion Models are a prominent fixture in every Vogue publication.Vogue Magazine is considered synonymous with world-class fashion modeling. In view ofComplainants worldwide reputation and publication of numerous international editions of

Vogue magazine and VOGUE websites, and ownership of VOGUE trademark registrations,consumers who view the disputed domain name will instantly recognize the VOGUE brand andassume Complainant is somehow connected. Therefore, the disputed domain name isconfusingly similar to Complainants trademarks.

With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:

Respondent has no rights or legitimate interests with respect to the disputed domain name.Complainant never granted Respondent the right to use or register the VOGUE mark or the nameVogue Fashion Models, either in connection with a domain name registration or a bonafideoffering of goods and services or for any other reason.

Prior to its registration of the disputed domain name, Respondent had no legitimate use or rightto use the Vogue brand. Moreover, Respondent does not make any valid claim to use the Voguebrand.

With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:

The facts of this case demonstrate that Respondent registered the disputed domain name forcommercial gain and to trade on Complainants goodwill and reputation. Knowing the

association Vogue Magazine has with premiere modeling, Respondent lures young, aspiringmodels through its use of the Vogue brand. In addition, Respondent has shown a willingness to

refer to www.vogue.comin a fashion that suggests an affiliation. For these reasons, there is nodoubt that the disputed domain name was registered in bad faith.

6. Discussion and Findings

Because of Respondents default, the Panel may accept as true the reasonable factual allegationsin the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains byProxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141;Bjorn Kassoe Andersen v.Direction International,WIPO Case No. D2007-0605;see also paragraph 5(e) of the Rules (If a

Respondent does not submit a response, in the absence of exceptional circumstances, the Panelshall decide the dispute based upon the complaint.).

However:

A respondent's default does not automatically result in a decision in favor of Complainant.

Subject to the principles described in paragraph 2.1 above with regard to the second UDRPelement, Complainant must establish each of the three elements required by paragraph 4(a) of the
http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1141http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0605.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0605.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0605.htmlhttp://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1141http://www.vogue.xn--com-9o0a/


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UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g.,toregard factual allegations which are not inherently implausible as being true), paragraph 4 of theUDRP requires Complainant to support its assertions with actual evidence in order to succeed ina UDRP proceeding. There are many examples of cases (typically involving complaints based onwholly unsupported assertions or mere conclusory statements) to which there has been no

response where (not withstanding such respondent default) the decision has nonetheless gone infavor of the respondent on grounds that the complainant has failed to prove its case.

SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition(WIPO Overview 2.0),paragraph 4.6.

Moreover:

The general standard of proof under the UDRP is on balance - often expressed as the balanceof probabilities or preponderance of the evidence standard. Under this standard, an assertingparty would typically need to establish that it is more likely than not that the claimed fact is true.

Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteriaor scenarios under paragraphs 4(a), (b), or (c) of the UDRP would typicallybe insufficient.

SeeWIPO Overview 2.0,paragraph 4.7.

The Majority emphasizes these principles to distinguish its ruling from the Dissent, which is wellreasoned and demonstrates that this case presents a difficult close question. However, in the end,the Majority concludes, that Complainant has not carried its burden.

A. Identical or Confusingly Similar

The disputed domain name incorporates Complainants trademark and differs fromComplainants registered VOGUE mark only by adding non-distinctive phrase fashionmodel.Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434.Complainant satisfies paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In order for Respondent to demonstrate rights or legitimate interests in the disputed domainname, it must show (paragraph 4(c) of the Policy):

(i) before any notice to Respondent of the dispute, Respondents use of, or demonstrable

preparations to use, the disputed domain name or a name corresponding to the disputed domainname in connection with a bona fideoffering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known bythe disputed domain name, even if Respondent has acquired no trademark or service mark rights;or
http://www.wipo.int/amc/en/domains/search/overview2.0/index.htmlhttp://www.wipo.int/amc/en/domains/search/overview2.0/index.html%20316http://www.wipo.int/amc/en/domains/search/overview2.0/index.htmlhttp://www.wipo.int/amc/en/domains/search/overview2.0/index.html#47http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0434.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0434.htmlhttp://www.wipo.int/amc/en/domains/search/overview2.0/index.html#47http://www.wipo.int/amc/en/domains/search/overview2.0/index.htmlhttp://www.wipo.int/amc/en/domains/search/overview2.0/index.html%20316http://www.wipo.int/amc/en/domains/search/overview2.0/index.html


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(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name,without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarkor service mark at issue.

It is a complainants burden to prove that a respondent lacks rights or legitimate interests in a

disputed domain name.National Construction Rentals, Inc. v. Toilets.com, Inc.,WIPO Case No.D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. Acomplainant need only make aprima facieshowing on this element, at which point the burdenshifts to respondent to present evidence that it has some rights or legitimate interests in thedisputed domain name. WIPO Overview 2.0,paragraph 2.1. The ultimate burden of proof,however, remains with complainant.Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / EklinBot Systems, Inc.,WIPO Case No. D2010-1141.

In view of Respondents default, the Panel finds that the above facts establish aprimafacieshowing that Respondent has no rights or legitimate interests in the disputed domain name.Moreover, Respondent has not rebutted such aprima facieshowing and therefore Complainant

has succeeded with respect to this Policy element.

C. Bad Faith Registration and Use

Complainant alleges bad faith registration as follows:

The facts of this case demonstrate that Respondent registered the disputed domain name forcommercial gain and to trade on Complainants goodwill and reputation. Knowing theassociation Vogue Magazine has with premiere modeling, Respondent lures young, aspiringmodels through its use of the Vogue brand. In addition, Respondent has shown a willingness torefer to www.vogue.comin a fashion that suggests an affiliation. For these reasons, there is no

doubt that the disputed domain name was registered in bad faith.

Respondent has not denied the allegation that knowing the association Vogue Magazine haswith premiere modeling; Respondent lures young, aspiring models through its use of the Voguebrand. However, the evidence Complainant offers in support of its contention contradicts, or at

least undermines, its allegations. Specifically, Respondents response Complainants cease-and-desist letter states:

We are not using the name Vogue Magazine, the dba for this company is Vogue Fashion Models,Inc. Our attorneys advised us that there is no relation with Vogue Magazine, so there should beno issue. Our customers are aware of this. We will cease and desist from using this name untilthis is looked unto further and reverified. We have no desire to use this name if its in fact gives

anyone the impression we are Vogue Magazine.

Annex H to the Complaint, page 1/3. Complainant makes no allegations that challenge orcontradict Respondents assertion that it relied on advice of counsel when selecting its name.Complainant is silent on the point.
http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0147.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0147.htmlhttp://www.wipo.int/amc/en/domains/search/overview2.0/index.htmlhttp://www.wipo.int/amc/en/domains/search/overview2.0/index.html#21http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1141http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1141http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#21http://www.wipo.int/amc/en/domains/search/overview2.0/index.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0147.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0147.html


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Evidence that a party relied on advice of counsel when registering a domain name is relevantwhen deciding whether the respondent acted in bad faith. The Jolt Company v. Digital Milk,Inc.,WIPO Case No. D2001-0493 (However, given the opinion of counsel and the differencesin the goods and services of the parties, this does not appear to be a case of deliberateinfringement. Legitimate disputes over likelihood of confusion are beyond the scope of the

current Policy.[] Thus, Complainant's remedy for infringement, should it wish to pursue it, isan action for infringement in the United States courts.). Of course, we should not allow arespondent to avoid a finding of bad faith by simply invoking an unverified claim that it relied onadvice of counsel, but neither should we dismiss evidence of such reliance without a basis fordoing so, especially in the absence of pointed allegations to the contrary.

However, where a party asserts advice of counsel as a defense to bad faith, it is not too much torequire at least a response to the complaint, if not supporting evidence such as a declaration or acopy of the opinion of counsel. Failing to require at least a response to the complaint andevidence (such as a sworn declaration) supporting the claim of reliance would risk enabling arespondent to improve its procedural position by defaulting, thereby avoiding any testing of the

claim of reliance. Consequently, while the Majority would recognize reliance on advice ofcounsel as a valid defense to an allegation of bad faith registration or use, it is not willing tocredit this defense on this record, where Respondent has defaulted and thereby failed tosubstantiate its claim of reliance on advice of counsel.

But just as we are procedurally strict with Respondent, so too must we be strict withComplainant. The Complaint here does not allege bad faith use of the disputed domain name, butinstead alleges only bad faith registration1; consequently Respondents default triggers noadverse inferences regarding the required bad faith use element. Complainant leaves it to thePanel to search the record for evidence of bad faith use.

The Majority is frustrated in this search. There is no evidence in the record about whether or howRespondent uses the disputed domain name in association with a website2.Complainant attachesno annex with a copy of Respondents website to show how it is (or was) used, either before or

after Complainant sent its cease and desist letter. As a result, the Panel has no direct evidenceabout the content of any webpage associated with the disputed domain name.

Whats more, the indirect evidence indicates that Respondents website, whatever its content,

played no role in the instance of confusion reflected in the email exchange. The aspiring modelsemail exchange that is of record recites that she was led to Respondent by virtue of a posting ona third party site at www.exploringtalent.comfor an opportunity to audition for a modelingassignment for a Donna Karens winter catalogue project. There is no evidence in the recordabout the content of this third party site and, consequently, no evidence that it displayed thedisputed domain name in any way (as a website URL or email address) or that the disputeddomain name played in any role in the ingnues initial interest in the Donna Karen audition as it

was advertised on the third party site. Indeed, quite to the contrary, the ingnues skeptical

father, who apprised Complainant of his daughters communications with Respondent, reportedthat They have no website. They claim Vogue.com as their website. Annex F to the Complaint,

page 5/6.
http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0493.htmlhttp://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0757#P148_15361http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0757#P148_15361http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0757#P151_16402http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0757#P151_16402http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0757#P151_16402http://www.exploringtalent.xn--com-9o0a/http://www.exploringtalent.xn--com-9o0a/http://www.exploringtalent.xn--com-9o0a/http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0757#P151_16402http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0757#P148_15361http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0493.html


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As far as this record reflects, the only evidence of any use of the disputed domain name is itsappearance in the email [email protected] Respondentsrepresentative used when corresponding with the inquiring model. When she saw that thecontract proposed by Respondent contained a provision allowing Respondent to post her imageon the Companys website, but did not identify a website, she asked:

You mentioned your website, Could you please email me the link, I am not sure I am on the rightone.

Using the email [email protected],Respondents representativeanswered:

Vogues official website is vogue.com.

The Majority finds this response ambiguous. It can be construed as either supportingComplainants interpretation that this suggests and affiliation or, on the other hand, as an effort

by Respondent to direct the inquiring model to the official Vogue site without making anyclaim that the link was to its own site.

Despite the ambiguity, this Majority finds that this response favors Complainant, but onlyslightly. Although the Majority finds that this exchange is evidence of ordinary likelihood ofconfusion, the Majority does not find this exchange, by itself, sufficient to support a finding ofbad faith use.

As there is no express allegation of bad faith use, Complainant forces the Panel to decide on itsown, without benefit of Complainants analysis, whether this email exchange is alone sufficient

to show the required bad faith use. Although the Dissent would find bad faith use, the Majority is

unwilling to do so, concluding instead that Complainant has not met its burden.

The Panel is aware of decisions holding that use of a domain name in an email address alone,without an associated webpage, may constitute bad faith use. The instant facts pale bycomparison to those cases, however, because Complainant has neither alleged nor provedfraudulent misrepresentation or phishing for personal informationor, for that matter, any othersort of conduct that would constitute comparable bad faith use. Compare, Smiths Group plc v.Lee Snooks, NAF Case No.FA1372112 (respondent used the disputed domain name in emailaddress to impersonate employee and order ten mobile phones using complainants corporateaccount; also typosquating);News AustraliaPty Limited and Twentieth Century Fox FilmCorporation v. Ron Kushner, NAF Case No. FA1446275;Anheuser-Busch, Incorporated v.Private Whois Service c/o budweiser-usa.com,NAF Case No. FA1335010) (using the disputeddomain name as part of phishing scheme to collect personal information); Victoria's SecretStores Brand Management, Inc. v. Private Whois victoriassecret-usa.com,NAF Case No.FA1415313 (Respondent has used the domain name in question in connection with an e-mailaddress incorporating the domain name to send fraudulent emails, posing as a Human ResourcesManager for VictoriasSecret); Mary Kay, Inc. v. Guillermo Machado a/k/a None c/o AmarachiJoseph,NAF Case No. FA1283193 (respondent used the disputed domain names to pass itselfoff as complainant in order to phish for Internet users personal information through email
mailto:%E2%80%[email protected]%E2%80%9Dmailto:%E2%80%[email protected]%E2%80%9Dmailto:%E2%80%[email protected]%E2%80%9Dmailto:%E2%80%[email protected]%E2%80%9D,mailto:%E2%80%[email protected]%E2%80%9D,mailto:%E2%80%[email protected]%E2%80%9D,mailto:%E2%80%[email protected]%E2%80%9D,mailto:%E2%80%[email protected]%E2%80%9D


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solicitation.). The Majority would certainly be prepared to hold that bad faith use of a domainname in an email address could very well satisfy paragraph 4(a)(iii) of the Policy, but not on thisslim record, where Complainant has not affirmatively alleged bad faith email use and the recordreflects a single ambiguous email exchange.

Dissenting Opinion

In October 2012, a model or an aspiring model sent an email through the websitewww.exploretalent.netto Respondent [email protected] to apply for amodeling job in response to an advertisement or solicitation for a job related to Donna KaransWinter Catalogue. It is unclear from the record the exact nature of such advertisement or

solicitation, including whether it contained the disputed domain name (the Domain Name) or the email

[email protected] and whether there was ever a website at the DomainName. What is clear, however, is that upon receiving at the [email protected] the models inquiry regarding the job, Respondentengaged in multiple communications with the model using the [email protected]. Specifically, Respondent, using the same emailaddress,[email protected], responded to the model by inviting her to an in-personinterview/casting call, and signed its email with the name Vogue Fashion Models, Inc.Respondent informed the model in a subsequent email using the same email address that she washired for the modeling job. The model then emailed Respondent at the same email address andstated, Thank you so much for your email and contract. As you advised me, I am carefullyreading the contract. You mentioned your website, could you please email me the link, I am not

sure I am on the right one. Respondents contract read, Model hereby grants Company theright to place pictures of Model on any Company Websites [] Respondent replied using the

email [email protected] stating that Vogues official websiteis www.vogue.com,but did not provide any information regarding its own website. (Annex F tothe Complaint.)

The models father subsequently contacted Vogue magazine, and asked if Vogue Fashion

Models Inc. is part of the Vogue family. In his emails, he stated that (a) his daughter respondedto a casting call posted by Respondent on the third-party explore talent website, (b) the NewYork address used by Vogue Fashion Models is the same address as Elite modeling agency, (c)he could not find a company registration for Vogue Fashion Models, Inc. in New York state, (d)

They claim to be part of your group, but the contract stipulates FLORIDA law, and (e) Theyhave no website. They claim Vogue.com as their website. (Amended Complaint, paragraph 19and Annex F to the Complaint.)

Conde Nast, on behalf of Complainant, subsequently sent Respondent a cease-and-desist letter.In response, Respondent stated: We are not using the name Vogue Magazine, the dba for this

company is Vogue Fashion Models, Inc. Our attorneys advised us that there is no relation withVogue Magazine, so there should be no issue. Our customers are aware of this. We will cease
http://www.exploretalent.xn--net-9o0a/http://www.exploretalent.xn--net-9o0a/mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected],mailto:[email protected]:[email protected]:[email protected],mailto:[email protected]:[email protected]:[email protected]:[email protected]://www.exploretalent.xn--net-9o0a/


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and desist from using this name until this is looked unto further and reverified. We have nodesire to use this name if its in fact gives anyone the impression we are Vogue Magazine.(Amended Complaint, paragraph 21 and Annex H to the Complaint.)

This Panelist finds that the Domain Name is confusingly similar toComplainants VOGUE mark. The Domain Name contains Complainants VOGUE mark in its

entirety, and the generic or descriptive phrase fashion models that relates to Complainantsbusiness. As Complainant noted, Fashion Models are a prominent fixture in every Vogue

publication. See,e.g., Victoria's Secret Stores Brand Management, Inc. v. Michael

Tepelboym,NAF Case No. FA1393068 (finding the domain name confusingly similar to complainants VICTORIAS SECRET mark);The Neiman MarcusGroup, Inc. and NM Nevada Trust v. Unasi Management Inc.,NAF Case No. FA448719(finding the domain name among others confusingly similar tocomplainants NEIMANN MARCUS mark);Elite Licensing Company SA, Elite Model

Management v. Sencea Brock,WIPO Case No. D2010-1747 (finding the domain name confusingly similar to complainants ELITE mark because the addition oftwo generic or descriptive terms relating to the field in which Complainants operate does notdistinguish the domain name from complainants mark, or prevent [] the likelihood of

confusion in the minds of Internet users and clients of Complainants []).

B. Rights or Legitimate Interests

Complainant alleged that Respondent has no legitimate rights or interest in the Domain Name.This Panelist concurs.

Neither the record nor Respondent have proved or demonstrated that Respondent has beencommonly known by the domain name under paragraph 4(c)(ii) of thePolicy. On the WhoIsrecord for the Domain Name, Respondents name is listed as Premier Models International Inc.

In emails Respondent sent from the address [email protected] and on the contractsent from that address, Respondent listed the trade name Vogue Fashion Models, Inc. Outsideof Respondents use of the name Vogue Fashion Models, Inc. in connection with the Domain

Name, there was no additional evidence in the record that Respondent uses that trade name. (Therecord did include an allegation by the models father that no such business name is registered inNew York state, where Respondent is located, and that Respondents address corresponds to that

of a third-party modeling agency.) In any event, Respondents use of the trade name VogueFashion Models, Inc. does not justify Respondents misappropriation of Complainants famousand federally registered VOGUE mark in the Domain Name. If that were the case, cybersquatterscould freely use and appropriate the trademarks of others as domain names simply by also usinga trade name or business name corresponding to the domain name. Both the courts and UDRPpanels, however, have rejected this position. See,e.g., Eurotech, Inc. v. Cosmos EuropeanTravels AG, 2002 U.S. Dist. LEXIS 13615, at pages 31-32 (E.D. Va. 2002) (holding that analleged infringer's changing of its business name to incorporate the allegedly infringing domainname did not make it a legal name or commonly used name for purposes of determining badfaith under the Anticybersquatting Consumer Protection Act (ACPA). The district court stated:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1747http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1747http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1747


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If such a name change could preclude a finding of bad faith, an entity could escape the effect of

the ACPA simply by registering an infringing domain name and then changing its business nameto match the infringing domain name.);CyBerCorp Holdings, Inc. v. Jay Allman,NAF Case No.FA244090 (Respondents choice of a business name and domain name incorporating

Complainants trademark was made primarily because of the notoriety of Complainants mark

and/or with complete disregard Complainants trademark rights. Naming oneself with anotherstrademark does not legitimatize the use of the name in a domain name. Therefore, Respondentcannot claim rights in the domain name pursuant to Policy 4(c)(ii).).

Further, Respondents bald statement in its response to the cease-and-desist letter that Ourattorneys advised us that there is no relation with Vogue Magazine, which the Majority

interprets as a fact that [Respondent] relied on advice of counsel when selecting its name, doesnot demonstrate that Respondent has been commonly known by the Domain Name. See,e.g.,Panavision, Inc. and Panavision International, L. P. v. Ed Meyer, d/b/a/ Panavisions Eyewear

and Sunglasses, Domains by Proxy, Inc., and M.P.W., Inc. d/b/a Panavisions Eyewear and

Sunglasses, Inc.,WIPO Case No. D2004-0002 (Respondent contends that it has trademark

rights in PANAVISIONS and PANAVISIONS.COM. However, Respondent produces noevidence of such rights, whether in the form of registration rights or proof that the terms haveacquired secondary meaning sufficient to designate Respondent as the source of particular goodsand services. Absent such evidence, the Panel must disregard Respondents baldassertion.);Mars UK Limited v. John Ritchie,WIPO Case No. D2002-0702 (finding nolegitimate interest of respondent in the domain name despite a letter inthe record from respondent's attorney referring to a detailed opinion from Counsel andproviding an opinion that the terms pedigree and pet foods were in their view generic).

Finally, Respondents agreement, in response to Complainants demand letter, to stop using thebusiness name Vogue Fashion Models, Inc. - which is effectively identical to the DomainName - constitutes further evidence that Respondent lacks rights in the Domain Name underparagraph 4(c)(ii) of the Policy.

Neither the record nor Respondent have proved or demonstrated that Respondent has a right orlegitimate interest under paragraph 4(c)(i) or 4(c)(iii) of the Policy. Respondent has not used theDomain Name in connection with a bona fideoffering of goods or services, or for a legitimatenoncommercial or fair use. To the contrary, Respondent has used the Domain Name to negotiatea business contract with a model, and in the course of those negotiations, failed to reveal its ownwebsite in response to the models direct request for such information. Instead, Respondent,using the email [email protected],pointed the model/applicant toComplainants www.vogue.comwebsite as its own. Respondents actions in referencingComplainants website while using the email [email protected] reinforcedand/or increased the suggestion of an affiliation with or sponsorship by Complainant alreadycreated by the Domain Name containing Complainants famous mark VOGUE long known for

its fashion and modeling content. In addition, Respondents overtly commercial use of theDomain Name does not constitute a noncommercial or fair use of Complainants mark VOGUEin the Domain Name.
http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0002.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0002.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0702.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0702.htmlmailto:[email protected],http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/mailto:[email protected]:[email protected]://www.vogue.xn--com-9o0a/mailto:[email protected],http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0702.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0002.html


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In short, Respondents use of the Domain Name to offer modeling agency services does not

constitute a bona fideoffering of goods or services because (a) the Domain Name is confusinglysimilar to Complainants VOGUE mark, and (b) Respondent used the Domain Name in a mannerthat caused a likelihood of confusion.

C. Bad Faith Registration and Use

As discussed above, Complainant expressly alleged that Respondent registered and used theDomain Name in bad faith, and provided evidence that Respondent used the Domain Name in itsemail address to negotiate a business contract over the course of multiple emails. The record alsoshows that Respondent posted a casting call on a third-party website, and that themodel/applicant responded to the casting call and the models interest was emailed toRespondent [email protected]. When the model asked Respondent for itswebsite address, Respondent failed to provide it, and instead directed the model toComplainants www.vogue.comwebsite. The models father subsequently contacted Voguemagazine and asked if Respondent was part of the Vogue family. He also stated, among other

things, that They claim to be part of your group. Respondent has not contested Complainantsallegations or the facts presented in its Complaint.

Based on the facts of this case, this Panelist finds that Respondent registered the Domain Namein bad faith with knowledge of Complainants rights in its VOGUE mark. This Panelist further

finds that Respondents use of the confusingly similar Domain Name constitutes bad faith underparagraph 4(b)(iv) of the UDRP, because Respondent has used the Domain Name tointentionally attract, for commercial gain, Internet users by creating a likelihood of confusionwith Complainants VOGUE mark as to the source, sponsorship, affiliation, and/or endorsementof Respondents activities.

This Panelist respectfully disagrees with the Majoritys positions on bad faith as discussed indetail below.

First, the Majority holds that Complainant did not allege bad-faith use of the Domain Name. Tothe contrary, as noted above, Complainant expressly alleged that Respondent registered and usedthe Domain Name in bad faith.

Second, this Panelist believes that the Majoritys analysis does not give due consideration to

Complainants unrebutted claims including, for example, that the VOGUE mark is famous andthat Vogue magazine, published since 1892, is one of the worlds most renowned fashion

magazines and is widely circulated; publishes information about fashion and style, amongother topics; Fashion Models are a prominent fixture in every Vogue publication. Inside the

fashion industry and across popular culture, Vogue Magazine is considered synonymous withworld-class modeling; and, as a result, consumers viewing the Domain Name will instantl yrecognize the Vogue brand and assume Complainant is somehow connected. Accepting those

allegations as true, when considering Respondents use of the Domain Name in connection with

the fashion and modeling business, Respondents activities are in bad faith.
mailto:[email protected]://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/mailto:[email protected].


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Third, this Panelist respectfully disagrees with the Majoritys position that the Domain Name had

to play a role in the model/applicants initial interest in contacting Respondent. As noted

above, the record is unclear on the content of the advertisement or solicitation that prompted themodels initial inquiry, but the record does indicate that Respondent posted the ad. And the

record is clear that the models inquiry regarding the job was sent to Respondent at the email

[email protected],which created a likelihood of confusion. The record isalso clear that Respondent did not dispel the likelihood of confusion caused by its use of theVOGUE mark in its email address. And the record is clear that Respondent, by failing to discloseits own website address in response to the models inquiry and instead pointing the model to

Complainants www.vogue.comwebsite, furthered this likelihood of confusion. The Majoritydescribes this interaction as an effort by Respondent to direct the inquiring model to the Vogue

site without making any claim that the link was to its own site, but in this Panelists opinion, the

email exchange was clear that the model had asked for Respondentswebsite, not VOGUEmagazines website. Further, the models father sent an email to Vogue magazinescommunication department askingif Respondent was part of the Vogue family, whichdemonstrates that Respondents useof VOGUE in the Domain Name caused actual confusion.

These multiple emails demonstrate that Complainants claims do not rest, as the Majority claims,on a single ambiguous email.

Fourth, this Panelist respectfully disagrees with the Majoritys characterization of Respondentsresponse to the cease-and-desist letter as contradicting or undermining Complainantsallegations. Respondent stated, Our attorneys advised us that there is no relation with Vogue

Magazine, so there should be no issue. As noted above in this Panelists discussion on right orlegitimate interest, the Majority interprets this sentence as a fact that [Respondent] relied on

advice of counsel when selecting its name. However, (a) the quoted statement is simply a

factual declaration that Respondent has no relation to Vogue Magazine, not a legal opinion, (b)Respondent did not state that the advice it allegedly received related to Respondentsselectionofthe trade name or the Domain Name, (c) there is no evidence that this alleged advice ofcounselprecededComplainants cease-and-desist letter, (d) Respondent did not identify thecounsel or provide a copy of counsels opinion or advice (if there was such advice), and (e)

Complainants inclusion of Respondents email containing a factual statement attributed to itscounsel does not make it a verified allegation ofRespondent, which defaulted.

In its opinion, the Majority states, Evidence that a party relied on advice of counsel when

registering a domain name is relevant when deciding whether Respondent acted in bad faith,citing The Jolt Company v. Digital Milk, Inc.,WIPO Case No. D2001-0493 (However, giventhe opinion of counsel and the differences in the goods and services of the parties, this does notappear to be a case of deliberate infringement. Legitimate disputes over likelihood of confusionare beyond the scope of the current Policy. [] Thus, Complainant's remedy for infringement,

should it wish to pursue it, is an action for infringement in the United States courts.).TheJolt decision, however, is inapposite because the panel in that case denied the complaintbased on the respondents presentation of sufficient evidence to show demonstrablepreparations to use [the Domain Names] in connection with a bona fideoffering of goods orservices and did not reach a finding on bad faith. Here, Respondent presented no evidence ofsuch demonstrable preparations to use the Domain Name for a bona fideoffering of services.
mailto:[email protected]:[email protected]://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0493.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0493.htmlhttp://www.vogue.xn--com-9o0a/mailto:[email protected]


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Nor does the record does not contain any evidence that Respondent uses the Domain Name inconnection with a bona fideoffering of goods or services.

Finally, this Panelist respectfully disagrees with the Majoritys position that Respondents lack

of a website associated with the Domain Name controls or has a material bearing on whether

Respondent used the Domain Name in bad faith given Respondents other activities detailedabove. Regardless of whether Respondent used the Domain Name for a website, use of theDomain Name for an email address alone can constitute bad-faith use. There is no requirementunder the UDRP that a disputed domain name must be used for a website to be used in bad faith.Complainant has alleged and shown that Respondent used the Domain Name for email, and indoing so, created a likelihood of confusion with Complainants VOGUE mark as to the source,

sponsorship, affiliation, and/or endorsement of Respondents commercial activities. These factsmeet the plain requirements of establishing bad faith under paragraph 4(b)(iv) of the Policy.

The Majority instead appears to impose a higher burden on Complainant. Specifically, inattempting to distinguish this case from prior decisions finding bad faith based on use of a

domain name in email addresses, the Majority states: The instant facts pale by comparison tothose cases, however, because Complainant has neither alleged nor proved fraudulentmisrepresentation or phishing for personal information or, for that matter, any other sort ofconduct that would constitute comparable bad faith use. Thus, in the Majoritys view, it appears

that use of a domain name in email addresses that creates a likelihood of confusion is not enoughfor Complainant to prevail, and Complainant must also prove phishing or fraud. This Panelistrespectfully disagrees. In any event if such conduct was required, this Panelist further submitsthat Respondents actions here in identifying Complainants website as its own are highly

deceptive and analogous to phishing and fraud.

Further, the Majority does cite and acknowledge prior UDRP decisions involving bad-faith use

of a domain name used for email, but this Panelist finds its efforts to distinguish those casesbased on differences between the facts of those cases and the instant case unpersuasive. Asshown below, four of those decisions were based on commercial attempts to benefit from alikelihood of confusion (paragraph 4(b)(iv) of the Policy), which is the case here, and one wasbased on a general finding of bad faith.

The Majority summarizes Smiths Group plc v. Lee Snooks, NAF Case No. FA1372112, asrespondent used the disputed domain name in email address to impersonate employee and orderten mobile phones using complainants corporate account; also typosquating. However,

the Smithsdecision states, The Panel finds Respondent was attempting to commercially benefitby creating confusion about Complainants association with the disputed domain name.

Therefore, the Panel concludes Respondentsuse of the domain nameconstitutes bad faith registration and use under Policy 4(b)(iv).

The Majority cites, but does not summarize,News Australia Pty Limited and Twentieth CenturyFox Film Corporation v. Ron Kushner, NAF Case No. FA1446275, which held [t]he recordamply demonstrates that Respondent registered and is using the disputed domain name to create a likelihood of confusion among Internet users as to the possibility thatComplainant is the source, [sponsor], affiliate or endorser of Respondent and its activities


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conducted under the banner of the domain name. It is also evident that Respondent intends toprofit from the behavior outlined in the Complaint. This is evidence of bad faith [registration]and use of the domain name under Policy 4(b)(iv).

The Majority summarizes Victoria's Secret Stores Brand Management, Inc. v. Private Whois

victoriassecret-usa.com, NAF Case No. FA1415313, as respondent has used the domain namein question in connection with an e-mail address incorporating the domain name to sendfraudulent emails, posing as a Human Resources Manager for Victorias Secret. TheVictoria'sSecret decision, however, held that Complainant believes that Respondent benefits financiallyfrom such use of the domain name by causing confusion between the e-mail address and domainname and Complainants company. The Panel agrees and finds that Respondents attempts to

pass itself off as Complainant, presumably for financial gain, is a violation of Policy 4(b)(iv).

The Majority summarizesMary Kay, Inc. v. Guillermo Machado a/k/a None c/o AmarachiJoseph,NAF Case No. FA1283193) as respondent used the disputed domain names to pass

itself off as complainant in order to phish for Internet users personal information through email

solicitation. TheMary Kay decision, however, held that this constitutes bad faith registrationand use pursuant to Policy 4(b)(iv) and Respondents phishing scheme is creating a likelihoodof confusion []

Accordingly, the decisions in Smiths,News Australia Pty Limited, Victoria's Secret,andMaryKaysupport, rather than undermine, a finding that Respondents use of the Domain Name foremail and to create a likelihood of confusion constitutes bad faith.

Regarding the fifth decision,Anheuser-Busch, Incorporated v. Private Whois Service c/obudweiser-usa.com,NAF Case No. FA1335010, the Majority summarizes it as using thedisputed domain name as part of phishing scheme to collect personal information.

TheAnheuser-Busch decision held, Respondent hosts e-mail addresses with its domain name which Respondent uses to attempt to gain personal and financialinformation from Internet users through fake job postings. The Panel finds Respondents use of

the disputed domain name for such a purpose constitutes bad faith registration and use pursuantto Policy 4(a)(iii).

Like the above-discussed decisions, theAnheuser-Buschdecision also supports a finding of badfaith in this case. Here, Respondent used the Domain Name to negotiate a modeling contract thatgranted Respondent rights to post photographs of the model on any Company websites, which

Respondent failed to disclose in response to the models request. Instead, Respondent directed

the model to Complainants www.vogue.comwebsite. The models father then asked Voguemagazine if Respondent was part of Vogue, and stated, They claim to be part of your group.

For purposes of the UDRP, this Panelist believes that Respondents bad-faith activities are just asactionable as the phishing cases.

7. Decision
http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/http://www.vogue.xn--com-9o0a/


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For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules,this Panelist would order that the Domain Name be transferred toComplainant.

David M. Kelly

Panelist (Dissenting)Date: July 5, 2013

Notes and Questions

1. Reverse domain name hijacking refers to the practice of a trademark owner making afalse cybersquatting claim in order to secure a domain name. For a database of thesecases seewww.rdnh.com.

B. WIPO ARBITRATION

WIPO is the largest of the UDRP service providers. The following chart was created byWIPO and demonstrates the rise in domain name disputes over time. WIPO received 2,884domain name disputes in 2012, which marks the largest number of disputes ever. The number ofcases has risen ever year since 2003, with one exception in 2009, following the global recession.The total number of domain names in dispute, since one case can include multiple domainnames, also hit a record level in 2012, reaching 5,081 domain names.

According to WIPO, parties have settled a quarter of all cases without a panel decision.

Of the remainder, 85% of panel decisions have ordered transfer of the domain names in questionto the complainant and 13% of the complaints were denied, leaving the names in the possessionof the registration holder.

Domain name tasting is the practice of registering domain names during a five-dayregistration fee grace period for pay-per-click revenue. Frequently involving trademarks, theoften automated practice of tasting effectively prevents rights holders from assembling reliableand timely information that would enable the filing of a UDRP complaint, leading them in someinstances to resort to court litigation.
http://www.rdnh.com/http://www.rdnh.com/http://www.rdnh.com/http://www.rdnh.com/


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C. THE FOCUS ON BAD FAITH

LANHAM ACT 43(D)

(d) Cyberpiracy prevention

(1)(A) A person shall be liable in a civil action by the owner of a mark, including a personalname which is protected as a mark under this section, if, without regard to the goods or servicesof the parties, that person(i) has a bad faith intent to profit from that mark, including a personal name which is protected asa mark under this section; and(ii) registers, traffics in, or uses a domain name that(I) in the case of a mark that is distinctive at the time of registration of the domain name, isidentical or confusingly similar to that mark;(II) in the case of a famous mark that is famous at the time of registration of the domain name, isidentical or confusingly similar to or dilutive of that mark; or(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section

220506 of title 36.(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), acourt may consider factors such as, but not limited to(I) the trademark or other intellectual property rights of the person, if any, in the domain name;(II) the extent to which the domain name consists of the legal name of the person or a name thatis otherwise commonly used to identify that person;(III) the persons prior use, if any, of the domain name in connection with the bona fide offering

of any goods or services;


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(IV) the persons bona fide noncommercial or fair use of the mark in a site accessible under the

domain name;(V) the persons intent to divert consumers from the mark owners online location to a siteaccessible under the domain name that could harm the goodwill represented by the mark, eitherfor commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood

of confusion as to the source, sponsorship, affiliation, or endorsement of the site;(VI) the persons offer to transfer, sell, or otherwise assign the domain name to the mark owneror any third party for financial gain without having used, or having an intent to use, the domainname in the bona fide offering of any goods or services, or the persons prior conduct indicating

a pattern of such conduct;(VII) the persons provision of material and misleading false contact information when applyingfor the registration of the domain name, the persons intentional failure to maintain accurate

contact information, or the persons prior conduct indicating a pattern of such conduct;

(VIII) the persons registration or acquisition of multipledomain names which the person knowsare identical or confusingly similar to marks of others that are distinctive at the time ofregistration of such domain names, or dilutive of famous marks of others that are famous at the

time of registration of such domain names, without regard to the goods or services of the parties;and(IX) the extent to which the mark incorporated in the persons domain name registration is or is

not distinctive and famous within the meaning of subsection (c)(1) of this section.(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which thecourt determines that the person believed and had reasonable grounds to believe that the use ofthe domain name was a fair use or otherwise lawful.(C) In any civil action involving the registration, trafficking, or use of a domain name under thisparagraph, a court may order the forfeiture or cancellation of the domain name or the transfer ofthe domain name to the owner of the mark.(D) A person shall be liable for using a domain name under subparagraph (A) only if that personis the domain name registrant or that registrants authorized licensee.(E) As used in this paragraph, the term traffics inrefers to transactions that include, but are notlimited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any othertransfer for consideration or receipt in exchange for consideration.

(2)(A) The owner of a mark may file an in rem civil action against a domain name in the judicialdistrict in which the domain name registrar, domain name registry, or other domain nameauthority that registered or assigned the domain name is located if(i) the domain name violates any right of the owner of a mark registered in the Patent andTrademark Office, or protected under subsection (a) or (c) of this section; and(ii) the court finds that the owner(I) is not able to obtain in personam jurisdiction over a person who would have been a defendantin a civil action under paragraph (1); or(II) through due diligence was not able to find a person who would have been a defendant in acivil action under paragraph (1) by(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to theregistrant of the domain name at the postal and e-mail address provided by the registrant to theregistrar; and(bb) publishing notice of the action as the court may direct promptly after filing the action.


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(B) The actions under subparagraph (A)(ii) shall constitute service of process.(C) In an in rem action under this paragraph, a domain name shall be deemed to have its situs inthe judicial district in which(i) the domain name registrar, registry, or other domain name authority that registered orassigned the domain name is located; or

(ii) documents sufficient to establish control and authority regarding the disposition of theregistration and use of the domain name are deposited with the court.(D)(i) The remedies in an in rem action under this paragraph shall be limited to a court order forthe forfeiture or cancellation of the domain name or the transfer of the domain name to the ownerof the mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed bythe owner of a mark in a United States district court under this paragraph, the domain nameregistrar, domain name registry, or other domain name authority shall(I) expeditiously deposit with the court documents sufficient to establish the courts control and

authority regarding the disposition of the registration and use of the domain name to the court;and(II) not transfer, suspend, or otherwise modify the domain name during the pendency of the

action, except upon order of the court.(ii) The domain name registrar or registry or other domain name authority shall not be liable forinjunctive or monetary relief under this paragraph except in the case of bad faith or recklessdisregard, which includes a willful failure to comply with any such court order.(3) The civil action established under paragraph (1) and the in rem action established underparagraph (2), and any remedy available under either such action, shall be in addition to anyother civil action or remedy otherwise applicable.(4) The in rem jurisdiction established under paragraph (2) shall be in addition to any otherjurisdiction that otherwise exists, whether in rem or in personam.

BARCELONA.COM, INCORPORATED v. EXCELENTISIMO

AYUNTAMIENTO DE BARCELONA

330 F.3d 617 (4thCir. 2003)

NIEMEYER, Circuit Judge:

Barcelona.com, Inc. (Bcom, Inc.), a Delaware corporation, commenced this actionunder the Anticybersquatting Consumer Protection Act against Excelentisimo Ayuntamiento deBarcelona (the City Council of Barcelona, Spain) for a declaratory judgment that Bcom, Inc.'sregistration and use of the domain name barcelona.com is not unlawful under the Lanham Act(Chapter 22 of Title 15 of the United States Code). The district court concluded that Bcom, Inc.'suse of barcelona.com was confusingly similar to Spanish trademarks owned by the City Council

that include the word Barcelona. Also finding bad faith on the basis that Bcom, Inc. hadattempted to sell the barcelona.com domain name to the City Council for a profit, the courtordered the transfer of the domain name to the City Council.

Because the district court applied Spanish law rather than United States law and based itstransfer order, in part, on a counterclaim that the City Council never filed, we reverse thejudgment of the district court denying Bcom, Inc. relief under the Anticybersquatting ConsumerProtection Act, vacate its memorandum opinion and its order to transfer the domain name


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barcelona.com to the City Council, and remand for further proceedings consistent with thisopinion.

I

In 1996, Mr. Joan Nogueras Cobo (Nogueras), a Spanish citizen, registered the domainname barcelona.com in the name of his wife, also a Spanish citizen, with the domain registrar,Network Solutions, Inc., in Herndon, Virginia. In the application for registration of the domainname, Nogueras listed himself as the administrative contact. When Nogueras met Mr. ShahabHanif, a British citizen, in June 1999, they developed a business plan to turn barcelona.com intoa tourist portal for the Barcelona, Spain, region. A few months later they formed Bcom, Inc.under Delaware law to own barcelona.com and to run the website, and Nogueras, his wife, andHanif became Bcom, Inc.'s officers. Bcom, Inc. was formed as an American company in partbecause Nogueras believed that doing so would facilitate obtaining financing for thedevelopment of the website. Although Bcom, Inc. maintains a New York mailing address, it hasno employees in the United States, does not own or lease office space in the United States, anddoes not have a telephone listing in the United States. Its computer server is in Spain.

Shortly after Nogueras registered the domain name barcelona.com in 1996, he placedsome Barcelona-related information on the site. The site offered commercial services such asdomain registry and web hosting, but did not offer much due to the lack of financing. Beforedeveloping the business plan with Hanif, Nogueras used a web-form on the City Council'sofficial website to e-mail the mayor of Barcelona, Spain, proposing to negotiatewith the CityCouncil for its acquisition of the domain name barcelona.com, but Nogueras received noresponse. And even after the development of a business plan and after speaking with potentialinvestors, Nogueras was unable to secure financing to develop the website.

In March 2000, about a year after Nogueras had e-mailed the Mayor, the City Councilcontacted Nogueras to learn more about Bcom, Inc. and its plans for the domain namebarcelona.com. Nogueras and his marketing director met with City Council representatives, and

after the meeting, sent them the business plan that was developed for Bcom, Inc.

On May 3, 2000, a lawyer for the City Council sent a letter to Nogueras demanding thatNogueras transfer the domain name barcelona.com to the City Council. The City Council ownedabout 150 trademarks issued in Spain, the majority of which included the word Barcelona, suchas Teatre Barcelona, Barcelona Informacio I Grafic, and Barcelona Informacio 010 ElTlefon Que Ho Contesta Tot.Its earlier effort in 1995 to register the domain name barcelona.es,however, was unsuccessful. The City Council's representative explained, It was denied toBarcelona and to all place names in Spain. This representative also explained that the CityCouncil did not try also to register barcelona.com in 1995 even though that domain name wasavailable because at that time . . . the world Internet that we know now was just beginning and it

was not seen as a priority by the City Council.The City Council now took the position withBcom, Inc. that its domain name barcelona.com was confusingly similar to numerous trademarksthat the City Council owned.

A couple of days after the City Council sent its letter, Nogueras had the domain namebarcelona.com transferred from his wife's name to Bcom, Inc., which he had neglected to do in1999 when Bcom, Inc. was formed.


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Upon Bcom, Inc.'s refusal to transfer barcelona.com to the City Council, the City Councilinvoked the Uniform Domain Name Dispute Resolution Policy (UDRP) promulgated by theInternet Corporation for Assigned Names and Numbers (ICANN) to resolve the dispute. Everydomain name issued by Network Solutions, Inc. is issued under a contract, the terms of whichinclude a provision requiring resolution of disputes through the UDRP. In accordance with that

policy, the City Council filed an administrative complaint with the World Intellectual PropertyOrganization (WIPO), an ICANN authorized dispute-resolution provider located inSwitzerland. The complaint sought transfer of the domain name barcelona.com to the CityCouncil and relied on Spanish law in asserting that Bcom, Inc. had no rights to the domain namewhile the City Council had numerous Spanish trademarks that contained the word Barcelona.As part of its complaint, the City Council agreed to be subject to the jurisdiction of theregistrant[']s residence, the Courts of Virginia (United States), only with respect to any challengethat may be made by the Respondent to a decision by the Administrative Panel to transfer orcancel the domain names that are [the] subject of this complaint.

The administrative complaint was resolved by a single WIPO panelist who issued aruling in favor of the City Council on August 4, 2000. The WIPO panelist concluded that

barcelona.com was confusingly similar to the City Council's Spanish trademarks, that Bcom, Inc.had no legitimate interest in barcelona.com, and that Bcom, Inc.'s registration and use ofbarcelona.com was in bad faith. To support his conclusion that Bcom, Inc. acted in bad faith, theWIPO panelist observed that the only purpose of the business plan was to commercially exploitinformation about the City of Barcelona. . . particularly . . . the information prepared andprovided by [the City Council] as part of its public service.The WIPO panelist ordered thatBcom, Inc. transfer the domain name barcelona.com to the City Council.

In accordance with the UDRP's provision that required a party aggrieved by the disputeresolution process to file any court challenge within ten business days, Bcom, Inc. commencedthis action on August 18, 2000 under the provision of the Anticybersquatting ConsumerProtection Act (the ACPA) that authorizes a domain name owner to seek recovery orrestoration of its domain name when a trademark owner has overstepped its authority in causingthe domain name to be suspended, disabled, or transferred. See 15 U.S.C. 1114(2)(D)(v).Bcom, Inc.'s complaint sought a declaratory judgment that its use of the name barcelona.comdoes not infringe upon any trademark of defendant or cause confusion as to the origin,sponsorship, or approval of the website barcelona.com; . . . [and] that [the City Council] is barredfrom instituting any action against [Bcom, Inc.] for trademark infringement. While the CityCouncil answered the complaint and stated, as an affirmative defense, that the court lackedjurisdiction over the City Council for any cause of action other than Bcom, Inc.'s challenge tothe arbitrator's Order issued in the UDRP domain name arbitration proceeding,the City Councilfiled no counterclaim to assert any trademark rights.

Following a bench trial, the district court entered a memorandum opinion and an orderdated February 22, 2002, denying Bcom, Inc.'s request for declaratory judgment and directingBcom, Inc. to transfer the domain name barcelona.com to the [City Council] forthwith. 189 F.Supp. 2d 367, 377 (E.D. Va. 2002). Although the district court concluded that the WIPO panelruling should be given no weight and this case must be decided based on the evidence presentedbefore the Court,the court proceeded in essence to apply the WIPO panelist opinion as well asSpanish law. Id. at 371. The court explained that even though the City Council did not own atrademark in the name Barcelonaalone, it owned numerous Spanish trademarks that included


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the word Barcelona, which could, under Spanish law as understood by the district court, beenforced against an infringing use such as barcelona.com. Id. Adopting the WIPO panelist'sdecision, the court stated that the WIPO decision was correct in its determination that [Bcom,Inc.] took 'advantage of the normal confusion' of an Internet user by using the 'Barcelona route'because an Internet user would 'normally expect to reach some official body . . . for . . . the

information.' Id. at 372. Referring to the facts that Bcom, Inc. engaged in little activity andattempted to sell the domain name to the City Council, the court concluded that these factorsclearly demonstrate a bad faith intent on the part of the Plaintiff and its sole shareholders toimproperly profit from their registration of the domain name barcelona.com. At bottom, thecourt concluded that Bcom, Inc. failed to demonstrate, as required by 15 U.S.C. 1114(2)(D)(v),that its use of barcelona.com was not unlawful.Id. at 373.

In addition to concluding that Bcom, Inc. failed to establish its claim, the court stated thatit was also deciding the City Council's counterclaim for relief under 15 U.S.C. 1125 anddetermined that the Spanish trademark 'Barcelona' is valid for purposes of the ACPA. Id. at374. Applying the factors of 15 U.S.C. 1125(d)(1)(B)(i), the court found that Nogueras and hiswife acted with bad faith intentin registering barcelona.com as a domain name. Id. at 374-76.

The court also found that barcelona.com is confusingly similar to the defendant's mark. Id. at376.

II

Bcom, Inc. contends that when it sought a declaration under 15 U.S.C. 1114(2)(D)(v), itwas entitled to have its conduct judged by U.S. trademark law, not Spanish trademark law. Itargues that even if Spanish law applies, however, a party cannot, under Spanish law, get aregistration for a term that is only geographically descriptive, such as the word 'Barcelona.'Finally, it maintains that its use of the domain name was not unlawful under United Statestrademark law because it could not be found to have acted in bad faith under 1125, as the

district court concluded.

The City Council contends that the WIPO panelist's decision, including its reference toSpanish law, must be considered to decide this case. It argues:

Trial courts may consider rights in foreign trademarks which were asserted in thetransfer decision under review. The [WIPO] administrative transfer proceeding itselfgives the district court both subject matter and personal jurisdiction; jurisdiction isnot dependent upon allegations of U.S. trademark rights. Therefore, failure toconsider the basis for the administrative decision would remove the basis for jurisdiction, and require dismissal of the case. The statute language does not limit the

marks considered to U.S. marks.* * *

To hold otherwise would be to strip a trademark owner of its foreign rightswhenever it is haled into court by a U.S. domain name owner who has lost a UDRPadministrative proceeding. Without the ability to assert their rights, foreigntrademark owners would automatically lose such proceedings, creating anunintended and unjust result.


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In light of the City Council's argument that failure to consider the basis for the [WIPO]decision would remove the basis for [this court's] jurisdiction,we will review first the basis forour jurisdiction and the role of the WIPO panelist's administrative decision.

After the district court denied the City Council's motion to dismiss, the City Councilfiled an answer, stating as one of its affirmative defenses:

This court lacks jurisdiction over Defendant regarding any cause of action other thanPlaintiff's challenge to the arbitrator's Order issued in the UDRP domain namearbitration proceeding.

This statement reflects the City Council's stipulation that when it filed the WIPO administrativeclaim in Switzerland, the City Council agreed to be subject to the jurisdiction of 'the Courts ofVirginia (United States), only with respect to any challenge that may be made by the Respondentto a decision by the Administrative Panel to transfer or cancel the domain names that are [the]subject of this complaint.' Accordingly, at least with respect to a claim brought under 1114(2)(D)(v), the City Council agrees that the district court had personal jurisdiction over theCity Council.

The district court had subject matter jurisdiction based on the fact that this case wasbrought under the Lanham Act, as amended by the ACPA, and that 1331and 1338of Title 28confer jurisdiction over such claims.

Apparently, the City Council does not dispute these jurisdictional observations as far asthey go. It contends, however, that jurisdiction to hear a claim under 1114(2)(D)(v)rests on arecognition of the WIPO proceeding and the law that the WIPO panelist applied. Although weagree with the City Council that the WIPO proceeding is relevant to a claim under 1114(2)(D)(v), it is not jurisdictional; indeed, the WIPO panelist's decision is not even entitled to

deference on the merits. A brief review of the scheme established by ICANN in adopting theUDRP and by Congress in enacting the ACPA informs our resolution of this issue.

A domain name is any alphanumeric designation which is registered with or assigned byany domain name registrar, domain name registry, or other domain name registration authority aspart of an electronic address on the Internet.15 U.S.C. 1127. To obtain a domain name, awould-be registrant simply makes application to a registrar (there are currently over 160),submits a fee, and agrees to the terms of the domain name registration agreement. Domain namesare assigned on a first-come, first-served basis.

The agreement that accompanies the registration of a domain name specifies terms andconditions of the registration and the policies governing the registrant's continued control over

the domain name, including conditions for suspension or transfer of the domain name.

It also provides a contractually mandated process, the UDRP, for resolution of disputesthat might arise between domain name registrants and trademark owners. The UDRP is intendedto provide a quick process for resolving domain name disputes by submitting them to authorizedpanels or panel members operating under rules of procedure established by ICANN and underany rules and principles of law that [the panel] deems applicable.ICANN, Rules for Uniform


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Domain Name Dispute Resolution Policy, P 15(a), athttp:// www.icann.org/dndr/udrp/uniform-rules.htm (Oct. 24, 1999).

Because the administrative process prescribed by the UDRP is adjudication lite as aresult of its streamlined nature and its loose rules regarding applicable law, the UDRP itselfcontemplates judicial intervention, which can occur before, during, or after the UDRP's dispute

resolution process is invoked. See ICANN, UDRP P 3(b), at http://www.icann.org/dndr/udrp/policy.htm (Oct. 24, 1999) (stating that the registrar will cancel ortransfer the domain name upon the registrar's receipt of an order from a court or arbitraltribunal, in each case of competent jurisdiction, requiring such action); id. at P 4(k) (Themandatory administrative proceeding requirements set forth in Paragraph 4 shall not preventeither you or the complainant from submitting the dispute to a court of competent jurisdiction forindependent resolution before such mandatory administrative proceeding is commenced or aftersuch proceeding is concluded); id.(providing that the registrar will stay implementation of theadministrative panel's decision if the registrant commences a lawsuit against the complainant ina jurisdiction to which the complainant has submitted under the applicable UDRP rule ofprocedure). As ICANN recognized in designing the UDRP, allowing recourse to full-blown

adjudication under a particular nation's law is necessary to prevent abuse of the UDRP process.See id.at P 1 (defining reverse domain name hijackingas use of the UDRP in bad faith toattempt to deprive a registered domain-name holder of a domain name). Thus, when a personobtains a domain name, the person agrees, in the registration contract with the registrar, to followthe UDRP as established by ICANN.

In 1999, Congress amended the Trademark Act of 1946 (the Lanham Act) with theAnticybersquatting Consumer Protection Act (ACPA), Pub. L. No. 106-113, 3001 et seq., 113Stat. 1501A-545 (codified in scattered sections of 15 U.S.C.), principally for the purpose ofprotecting trademark owners against cyberpiracy:

The purpose of the bill is to protect consumers and American businesses, to promotethe growth of online commerce, and to provide clarity in the law for trademarkowners by prohibiting the bad-faith and abusive registration of distinctive marks asInternet domain names with the intent to profit from the goodwill associated withsuch marks -- a practice commonly referred to as cybersquatting.

S. Rep. No. 106-140, at 4 (1999). Although the ACPA was enacted primarily to redresscyberpiracy or cybersquatting,it also provides limited liability for trademark infringement byregistrars who participate in the administration of the registration, transfer, and cancellation ofdomain names pursuant to a reasonable policy that is consistent with the purposes of thetrademark laws. See15 U.S.C. 1114(2)(D)(i)-(iii). And to balance the rights given to trademarkowners against cybersquatters, the ACPA also provides some protection to domain name

registrants against overreaching trademark owners. S. Rep. No. 106-140, at 11; see also 15U.S.C. 1114(2)(D)(iv)-(v). Thus, 1114(2)(D)(v)authorizes a domain name registrant to suetrademark owners for reverse domain name hijacking. 1 Under that reverse domain namehijacking provision, a domain name registrant who is aggrieved by an overreaching trademarkowner may commence an action to declare that the domain name registration or use by theregistrant is not unlawful under the Lanham Act. This section provides that the court may grantinjunctive relief to the domain name registrant, including the reactivation of the domain name ortransfer of the domain name to the domain name registrant.15 U.S.C. 1114(2)(D)(v).


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In sum, domain names are issued pursuant to contractual arrangements under which theregistrant agrees to a dispute resolution process, the UDRP, which is designed to resolve a largenumber of disputes involving domain names, but this process is not intended to interfere with ormodify any independent resolutionby a court of competent jurisdiction. Moreover, the UDRPmakes no effort at unifying the law of trademarks among the nations served by the Internet.

Rather, it forms part of a contractual policy developed by ICANN for use by registrars inadministering the issuance and transfer of domain names. Indeed, it explicitly anticipates thatjudicial proceedings will continue under various nations' laws applicable to the parties.

The ACPA recognizes the UDRP only insofar as it constitutes a part of a policy followedby registrars in administering domain names, and the UDRP is relevant to actions brought underthe ACPA in two contexts. First, the ACPA limits the liability of a registrar in respect toregistering, transferring, disabling, or cancelling a domai

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