WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elite Licensing Company S.A. and Elite Model Management v. Balalaika Ltd.
Case No. D2007-0006
1. The Parties
The Complainants are Elite Licensing Company S.A., Fribourg, Switzerland; and Elite Model Management, Paris, France, both represented by Cabinet Degret, of France.
The Respondent is Balalaika Ltd., Folkstone, Kent, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Direct Information Pvt Ltd d/b/a PublicDomainR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January�4,�2007. On January�4,�2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainR a request for registrar verification in connection with the domain name at issue. On January�8,�2007, Direct Information Pvt Ltd d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January�9,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January�29,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January�31,�2007.
The Center appointed Massimo Introvigne as the sole panelist in this matter on February�9,�2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainants are part of the Elite Group of Companies, which run in several different countries the largest worldwide network of model agencies under the service marks ELITE, ELITE MODELS and ELITE MODEL MANAGEMENT. These and/or other service marks including the word ELITE – and a number of corresponding trademarks for a variety of products – are either registered (in France, as international registrations under the Madrid Agreement, as European Community Trademarks, and in several countries other than France, including the United States), or they may enjoy protection as common law marks due to their having been widely used and promoted for several years. One of the Complainants is the owner of the domain name , corresponding to what is perhaps the most famous international web sites in the field of model agencies.
Respondent has registered the domain name and operates it for a web site which proposes enrollment to both male and female “models”, who can then sell their services to clients for both “nude photos” or “movies”. Although the web site “www.” appears to be at its initial stage of recruiting personnel, Respondent does operate other web sites where the services offered by its “models” to customers seem to include sexual activities, which would make their operations illegal in a number of countries. The disputed domain name has a creation date of May�17,�2005.
5. Parties’ Contentions
A. Complainants
Complainants claim that their service marks (also used as trademarks for several products) including ELITE, ELITE MODEL and ELITE MODEL MANAGEMENT are not only valid, but in fact enjoy a world-wide fame, and that is clearly confusingly similar to their service marks ELITE and ELITE MODEL, the addition of “world” not being enough to avoid the confusion. According to Complainants, the domain name has been registered in bad faith in order to take advantage of Complainants’ fame. Respondent has no right or legitimate interest in the domain name, and is not protected by any non-commercial or fair use exception, since the web site for which the domain name is used is clearly commercial. It is also used in bad faith, with a web site specifically designed in an endeavor to create a confusion between the “models” employed by Respondent for dubious and probably illegal activities and the real models represented by Complainants’ agencies. The use of a domain name confusingly similar to Complainants’ service marks for promoting services which may be sexually oriented or illegal is detrimental to Complainants’ reputation and international fame.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
In this Panel’s view the crux of this case, and a difficult question to answer, is whether, through the registrations mentioned by Complainants or through common law, valid trademark or service mark rights may have been obtained in a combination of words which are either inherently descriptive (MODEL) or of questionable distinctiveness (ELITE, WORLD). In the case of High-Class Distributions S.r.l. .v. Onpne Entertainment Services (WIPO Case No. D2000-0100) the Panel decided that the trademark HIGH CLASS, although registered in several countries as a logo or in combination with other words, was not entitled to protection per se as being “inherently descriptive, particularly where high quality luxury goods of the type dealt in by the Complainant are concerned”.
Prima facie, there would be some good reasons to apply the rationale of High-Class Distributions to the present case. In fact, ELITE is no less “inherently descriptive” than HIGH CLASS, and the world of top models represented by Complainants, just as the world of luxury goods in the aforementioned case, may be effectively described by an adjective such as ELITE. Contrary to what the Complaint seems to imply, this is not a clear-cut case where Complainants are the undisputed owners of trademark registrations for ELITE MODEL. In fact, a closer look at the trademarks registered by Complainants shows that they have been granted in most cases either for the word ELITE in combination not only with MODEL or MODELS, but also with a third word other than MODEL or MODELS, or for the same word(s) reproduced as part of a distinctive logo. In the Complaint itself, when “the trademark ELITE” is mentioned, the word ELITE is consistently reproduced in Complainants’ distinctive graphics rather than in plain block letters. A trademark ELITE MODEL WORLD has not been registered.
In a case concerning an American company belonging to the same group of Complainants, Elite Model Management Corporation v. Wesley Perkins (WIPO Case No. D2006-0297), the Panel concluded that where “established trademark rights exist, (…) complex issues based on national or European Union law [are] not within the scope of the Policy”. This is certainly true, but it is no less true that issues are indeed “complex”.
In this Panel’s view, not all trademarks and service marks registered in the name of Complainants would be sufficient, per se, to establish rights in the word marks ELITE MODEL or ELITE MODEL WORLD. As was noted in the Elite Model Management Corporation v. Wesley Perkins decision and cited in the Complaint, albeit incidentally, and a search performed by this Panel confirmed, trademark offices throughout the world, although not without exceptions, have been reluctant to grant registrations for ELITE MODEL or ELITE MODELS in plain block letters, while they did grant registrations for the same combinations of words when either distinctive graphics or a third distinctive word was included. On this basis alone, it would be unclear to this Panel whether Complainants could prevail.
Whether common law rights may be obtained in a simple combination of the words ELITE and MODEL is also a difficult question to answer, and one which would probably be answered differently, on the basis of both the national law and the prevailing case law, in different jurisdictions. However, answering this question here is, in the opinion of this Panel, not necessary. As precedents confirm, the Policy allow Panels to take into account all legal bases that may apply. A search on the Internet shows that the web site “www.”, operated by one of the Complainants, is among the best known, or perhaps, the best known, international site in its field. Thanks to this fame, this Panel believes that Complainants have a strong case that they do own a common law service mark rights for ELITE MODEL WORLD. Additionally, although in most cases the trademark and service mark registrations may be weak, their main or dominant element is indeed a combination of ELITE and MODEL, and a “family” of registrations appears to exist where ELITE and MODEL are combined with a third word. It should be added to this that a Google search confirms that the companies of the Complainants’ group are generally known as “Elite Model”; that the trade name of one of the Complainants is “Elite Model Management”; and that the name “Elite Model” seems to enjoy a unique international recognition in the specific field. Beyond the examination of one or another individual trademark or service mark registration, the Panel concludes that an assessment of Complainants’ trademark and service mark portfolio as a whole leads to the conclusion that Complainants have rights on both ELITE MODEL and ELITE MODEL WORLD in the field of services connected to agencies for models.
The Panel concludes that the domain name is virtually identical to the common law service mark ELITE MODEL WORLD used by both Complainants, and confusingly similar to the other registered and common law trademarks owned by Complainants, when the corresponding portfolio is considered as a whole, and elements of use, recognition, and world-wide fame are also taken into account
B. Rights or Legitimate Interests
Whether Respondent intends to use this particular domain name in order to carry on illegal activities is probable, but perhaps not sufficiently indicated by the Complaint, but is not necessary to determine for the purpose of these proceedings. In a number of decisions Panels have established that the so called “pornosquatting”, i.e. the use of a domain name similar to a well-known trademark for the promotion, organization or sale of sexually related or pornographic services (be they legal or illegal) does not create any right or legitimate interest, and is also particularly detrimental to the trademark owner.
C. Registered and Used in Bad Faith
There is little doubt, in the Panel’s mind, that Respondent’s use of the domain name is commercial (so that no defense of non-commercial or fair use may apply), and that the same Respondent did register and does use the domain name in bad faith. Respondent certainly intended to create a domain name suggestive of Complainants’ activities. Considering how similar the domain name , used by Complainants to operate a world-famous web site, and Respondent’s domain name are, this case may even have an element of typosquatting, since it is not at all unlikely that an Internet user wishing to visit Complainants’ well-known web site simply forgets the hyphen, and writes rather than , thus ending up being captured by Respondent’s dubious offers of services, in what amounts to a classical example of bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant Elite Model Management of Paris, France.
Massimo Introvigne
Sole Panelist
Date: February�27,�2007
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