Vogue Loses in Attempt to Ban Similarly-Named Website

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Vogue magazine may have raked in the most advertising dollars of all U.S. fashion mags for September, but it recently lost a bid involving an allegedly infringing domain name: voguefashionmodels.com. Earlier this year, counsel for the American magazine sent a cease-and-desist letter to the operators of the website, who responded by saying that they did not have any desire to cause confusion with Vogue’s brand and that they would "cease and desist from using this name until this is looked unto further and reverified," the magazine filed a complaint with the Internet Corporation for Assigned Names and Numbers (ICANN). Vogue, which is owned by Conde Nast, held that the site was being used to attract aspiring models who mistakenly thought the site was affiliated with Vogue.

On July 19th, ICANN, which has the power to rule on most types of trademark-based domain-name disputes and essentially award the domain(s) at issue to the rightful trademark owner, issued a statement refusing to grant Vogue ownership of the voguefashionmodels.com domain. Turns out, in a hearing on July 5th, the ICANN panelists found that Vogue had not met its burden in showing that the domain was infringing. The three elements are: 1) the domain names are confusingly similar or identical (this one was likely easy for Vogue to meet as individuals had been confused about the connection between Vogue and the modeling website); 2) the allegedly infringing website has no rights or legitimate interests in the domain names; and 3) the domain name was registered with knowledge of Vogue's use of the trademark and without a legitimate interest, and thus, in "bad faith."

According to ICANN's decision, Vogue was unable to prove that the operators of the voguefashionmodels.com domain were acting in bad faith, even given the fact that site administrators contacted individuals using the email “info@voguefashionmodels.com." While the majority of the panel agreed that Vogue failed to show any conduct that would constitute bad faith use, one panelist dissented, saying: “Complainant expressly alleged that respondent registered and used the domain name in bad faith, and provided evidence that respondent used the domain name in its email address to negotiate a business contract over the course of multiple emails.”

However, considering the fact that the voguefashionmodels.com site appears to be currently out of commission, maybe Vogue didn't actually lose this one after all. Also, as far as I know, an ICANN Domain Name Resolution hearing does not prevent a company from filing suit. So, Vogue still has the option of filing a trademark infringement lawsuit.