WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Elite Licensing Company SA, and Elite Model Management v. Ruben Arcas Paterna Case No. D2010-0653 1. The Parties
The Complainants are Elite Licensing Company SA of Fribourg, Switzerland, and Elite Model Management of Paris, France, represented by Cabinet Degret, France.
The Respondent is Ruben Arcas Paterna of Sevilla, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2010. On April 26, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On April 27, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on April 28, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on April 29, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” 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 (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 April 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2010.
On April 29, 2010, the Center received an email from the Respondent stating that he registered the domain name for a custumer, complaining that he had not received an informal request before the receipt of the Complaint and asking to get a translation of the Complaint into the Spanish language.
The Respondent did not submit any further Response. Accordingly, the Center notified the Respondent's default on May 25, 2010.
The Center appointed Torsten Bettinger as the sole panelist in this matter on June 6, 2010. 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.
As a preliminary matter, the Panel notes the Respondent's request for a Spanish-language translation of the Complaint, as well as the registrar's confirmation that the registration agreement for the disputed domain name was executed in the English language. Taking these into account, and in line with paragraph 11 of the Rules, the Panel finds that English is the proper language of the proceeding and therefore declines to order a translation of the Complaint. The Panel will render its decision in English. 4. Factual Background
The Complainants are part of the Elite Group of companies and run the model agency ELITE, together with the company Elite Model Management Corp. in the United States of America and Canada. The ELITE model agency, which was established in 1972, is a leading modeling agency worldwide, with almost 40 agencies across five continents. It has a 45% market share of the modeling agency market in the United States and Europe. Its models include a number of well-recognized names.
The Complainant owns hundreds of trade mark registrations for ELITE ( the “ELITE-Marks”), inter alia:
- French trademark registration no. 1662492 ELITE & design, registered on September 25, 1978 in Classes 35, 41 and 42;
- International registration No. 442385 ELITE & design, registered on December 6, 1978 in Classes 35, 41 and 42, with effect in Benelux, Spain and Italy;
- French national trademark No. 3489294 ELITE & design, registered on March 20, 2007 in Classes 01- 45.
The Complainants' trademarks have been found to be well-known internationally by previous panels (See Elite Model Management Corporation v. Wesley Perkins,WIPO Case No. D2006-0297 (); Elite Licensing Company S.A., Elite Model Management v. Elite Ltd.,WIPO Case No. DCC2007-0004 (); Elite Model Management, Elite Licensing Company S.A. v. Mard Peeters,WIPO Case No. D2007-1179 (); Elite Licensing Company S.A., Elite Model Management v. Mathias Baumgartner,WIPO Case No. D2007-1334 (); Elite Licensing Company S.A., Elite Model Management, Elite Model Management S.A. v. Publicity Works,WIPO Case No. D2008-1487 ()).
The disputed domain name was registered on March 25, 2008 and has been used to promote “escort” services. Furthermore, the website at the disputed domain name included an “elite” logo similar to the logo used by the Complainants. 5. Parties' Contentions A. Complainants
The Complainants assert that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainants contend that the domain name is confusingly similar to the ELITE Marks as it fully incorporates the word ELITE, which is the main and most distinctive element of the Complainants' trademarks, and that the adjunction of the suffix “.com” and of a generic term relating to the field in which the Complainants operate (“agencia” is the Spanish word for “agency”) are of no significance and must not be taken into account.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants contend that the Respondent does not own trademark rights in the term “Agencia Elite” and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because the domain name points towards a website displaying adult material which, in itself, constitutes an infringement on the Complainants' trademark rights and gravely prejudices and damages the Complainants' good reputation. The Complainants further state that the Respondent (either as an individual, business or other organization) has never been and is not currently commonly known by the disputed domain name or any portion thereof, that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and finally, that the Complainants have never assigned, licensed, sold or transferred any rights in their ELITE Marks to the Respondent.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainants contend that the disputed domain name was registered and has been used in bad faith.
With regard to bad faith registration, the Complainants contend that the Respondent was aware of the Complainants when registering the disputed domain name because the ELITE Marks are famous in connection with model agency services and the Respondent would not have registered the disputed domain name and used this domain name in connection with a website showing a logo similar to the Complainants' without having the Complainants' ELITE Marks in mind.
With regard to bad faith use, the Complainants contend that by using the disputed domain name and a logo similar to the Complainants' on his website, the Respondent has intentionally attempted to attract, for commercial gain and for an infringing purpose, Internet users to his website, by creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation or endorsement of his website and to benefit unfairly from the reputation of the Complainants marks. Upon the Complainants' contentions, the Respondent's bad faith is further evidenced by the fact that the Respondent registered a domain name comprising a famous trademark and by the fact that contents of the website accessible under the challenged domain name directly infringe on the Complainants' rights and gravely prejudice the Complainants by associating their marks to objectionable and possibly illegal activities. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of any products for which the domain name maybe used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the ELITE Marks, which are well-known in connection with model agency services.
The fact that the word “agencia” is added to the ELITE Marks does not eliminate the similarity between trademarks and the disputed domain name, as “agencia“ is the Spanish word for “agency” and therefore a descriptive component of the disputed domain name referring to the Complainants' main business. In numerous cases, it has been held that a domain name that wholly incorporates a complainant‘s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of generic words to such marks, such as “agencia” or “agency” (See Elite Licensing Company S.A. and Elite Model Management v. Lorena Saffarano,WIPO Case No. D2008-1488 (); Reuters Limited v. Stealth Commerce (a/k/a Telmex Management Services),WIPO Case No. D2002-0223 ()).
Furthermore, it is well established that the similarity between a trademark and a disputed domain name is not eliminated only by the fact that the trademark includes additional graphical elements (See e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0032; EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2001-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932).
Finally, it is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the trademark in which the Complainants have exclusive rights and that the Complainants have established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among UDRP Panels that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show inter alia one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
The Complainants asserted that the Respondent has no connection or affiliation with the Complainants, that the Respondent has not received any license, authorization, or consent to use the ELITE Marks in a domain name or in any other manner, that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor in a noncommercial or fair way, and that the Respondent is not commonly known under the disputed domain name or a name corresponding to the disputed domain name.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Panel is also convinced that the Respondent registered and used the domain name in bad faith.
The ELITE Marks are well-known internationally. The Respondent registered a domain name that consists of the ELITE Marks and the word “agencia”, the Spanish word for “agency”, which describes the Complainants main business. Furthermore, the Respondent has used a logo on his website which is confusingly similar to that of the Complainants, namely the word “Elite” in lower case, with a similar overall impression. In this Panel's view it is therefore inconceivable that the Respondent registered the disputed domain name without being aware of the Complainants and their rights in the ELITE Marks.
The Panel is also convinced that Respondent used the domain name in bad faith. The use of the disputed domain name in connection with a website providing “escort” services indicates the Respondent's intent to redirect Internet users to his website and thus to capitalize on the goodwill of the Complainants' ELITE Marks. This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent's use of the domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Respondent's default in this proceeding reinforces an inference of bad faith. If the Respondent had arguments that it acquired the domain name in good faith, and had a good faith basis for using the domain name, it should have asserted them.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant Elite Licensing Company SA.
Torsten Bettinger
Sole Panelist
Date: June 18, 2010
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