DM Luxury, LLC v. Veronica Bloom
Claim Number: FA1703001722575
Complainant is DM Luxury, LLC (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Veronica Bloom (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <modernluxurymagazines.com>, (‘the Domain Name’) registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2017; the Forum received payment on March 20, 2017.
On March 21, 2017, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <modernluxurymagazines.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@modernluxurymagazines.com. Also on March 21, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns a number of trade marks including or consisting of MODERN LUXURY in the USA for magazines and electronic publications. The trade mark MODERN LUXURY has been used by Complainant in the USA since at least as early as 2001. It has a number of domain names containing the mark including modernluxury.com.
In 2016, Respondent registered the disputed Domain Name. Previously the Domain Name resolved to a parked page advertising domain registration, hosting and email services and currently fails to resolve to any active web site.
No answer was received to Complainant’s cease and desist letter by email and the postal copy was returned as the address given appears to be false or inaccurate.
The Domain Name fully incorporates Complainant’s MODERN LUXURY trade mark with the addition of the generic term ‘magazines’, which relates to Complainant’s goods and services.
Respondent is not a licensee of Complainant nor is it authorised to use Complainant’s trade mark. Respondent has no rights or legitimate interests in respect of the Domain Name. Use in relation to a registrar parked page and passive holding is not a bona fide offering of goods and services or legitimate non commercial use.
Respondent registered and is using the Domain Name in bad faith having registered the Domain Name with actual knowledge of Complainant’s rights in the MODERN LUXURY marks, using false WhoIs information having passively held the Domain Name with no sign of any bona fide commercial use or legitimate non commercial use. Passive holding, not replying to a cease and desist letter and providing false contact details is evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a number of trade marks including or consisting of MODERN LUXURY in the USA for magazines and electronic publications. The trade mark MODERN LUXURY has been used by Complainant in the USA since at least as early as 2001. It has a number of domain names containing the mark including modernluxury.com.
The Domain Name registered in 2016 was used for a registrar’s parking page with no other commercial links and is currently not being used.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's MODERN LUXURY mark (which is registered in USA, where Respondent is based for magazines and has been used since 2001), the generic term ‘magazines’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by Complainant). The Panel agrees that the addition of the generic term ‘magazines’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact, it may add to confusion, as Complainant is in the magazine business.
The gTLD .com does not serve to distinguish the Domain Name from the MODERN LUXURY mark. See Red Hat Inc v Haecke FA 726010 (ForumJuly 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
There is no evidence of any use by Respondent of the Domain Name. However, it appears clear from the content of the Domain Name itself, MODERN LUXURY with the generic word ‘magazines’ that Respondent was aware of Complainant and its business at the time of registration of the Domain Name. Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s marks and names in the field of magazines, which, in the circumstances of Complainant’s longstanding reputation in this field, could not be bona fide use without authorisation. Respondent is not commonly known by the Domain Name upon reference to the WhoIs data. See Guardair Corporation v Pablo Palermo, FA 1407001571060 (Forum Aug 28, 2014) for support that this may be used as reference. As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The content of the Domain Name itself, using marks or names of Complainant with generic terms related to magazines, makes it clear that Respondent was aware of Complainant’s rights at the time of registration of the Domain Name. No use has been made of the name by Respondent since registration, other than the registrar’s parking page, and, indeed, given the content of the Domain Name as discussed above, any use would inevitably cause confusion with Respondent. See Phat Fashions LLC v Kruger, FA 96193 (Forum Dec 29, 2000)(finding bad faith under Policy 4(b)(iv) even though respondent has not actually used the domain name because’ it makes no sense whatever to wait until it actually uses the name when inevitably when there is such use it will create the confusion described in the Policy. Further passive use itself can be bad faith registration and use See Am. Broad. Cos. Inc v Sech, FA 893427 (Forum Feb 28, 2007)(concluding that respondent’s failure to make active use of its domain name in the three months after its registration indicated that he respondent registered the name in bad faith).
As such, the Panel believe that Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <modernluxurymagazines.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 19, 2017
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