Complainants are Elite Licensing Company SA of Fribourg, Switzerland and Elite Model Management of Paris, France, represented by Cabinet Degret, France.
The Respondent is PrivacyP of Moergestel, Netherlands and Purple Bucquet of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2010. On August 27, 2010, the Center transmitted by email to Power Brand Center LLC a request for registrar verification in connection with the disputed domain name. On September 1, 2010, Power Brand Center LLC, transmitted by email to the Center its confirmation that the disputed domain name would remain under registrar “lock” throughout the pendency of the administrative proceeding. Complainants filed an amendment to the Complaint on September 1, 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 Respondent of the Complaint, and the proceedings commenced on September 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 23, 2010.
The Center appointed Eduardo Machado as the sole panelist in this matter on September 29, 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. 4. Factual Background
Both Complainants belong to the same group of companies, namely the Elite Group, which was founded in France in 1972. The Elite Group operates one of the biggest and most renowned model agencies in the world.
The Complainants own the following trademark registrations:
- French national trademark No. 1.662.492, registered since September 25, 1978 in Classes 35, 41 and 42;
- International registration No. 442.385, registered since December 6, 1978 in Classes 35, 41 and 42, with effect in Benelux, Spain and Italy;
- Community trademark registration ELITE MODEL LOOK No. 749.770, filed on February 11, 1998 and registered since February 19, 2004 in Classes 3, 16 and 36;
- Community trademark registration No. 345.926, filed on August 7, 1996 and registered since June 27, 2002 in Classes 3, 14, 16, 18, 25, 28 and 40;
- Japanese national registration No. 4.093.514, filed on February 23, 1996 and registered since December 19, 1997 in Class 41.
Complainants’ trademarks, and in particular their distinctive verbal element ELITE, enjoy notorious trademark status in many countries of the world; this has also been recognized by the WIPO Arbitration and Mediation Center, notably in:
- Elite Model Management Corporation v. Wesley Perkins,WIPO Case No. D2006-0297 where it is stated that “trademarks for or including ELITE are well known in relation to modeling services”;
- Elite Licensing Company S.A., Elite Model Management v. Elite Ltd.,WIPO Case No. DCC 2007-0004 where it is stated that “the undisputed worldwide reputation of the Complainants’ business and the nature of the Domain Name itself all strongly suggest that the Respondent was aware of the Complainants’ business at the time that the Domain Name was registered and that the Respondent registered the Domain Name with both the infringing use and the intention to misrepresent an association with the Complainants’ in mind”;
- Elite Model Management, Elite Licensing Company S.A. v. Mard Peeters,WIPO Case No. D2007-1179 where it is stated that “[t]he Complainants have put substantial evidence before the Panel to demonstrate that for a long time the Complainants and their Elite modeling agency have been very well-known internationally as one of the leading modeling agencies in the world. The Panel is satisfied that when the Respondent registered the Domain Name and set up his business he was likely to have been well aware of the fame of the Complainants’ modeling agency” and that "[i]f the Complainants had not been as well-known as they are (employing many of the best known international fashion models), it might have been open for the Respondent to contend that he had merely ‘innocently’ combined two ordinary English words for the name of his business, one word being a laudatory term and the other word being a term to describe the ladies he employs" and, eventually, that "the Complainants are internationally well-known and the Respondent is likely to have been well aware, as the Complainants allege, of the Complainants’ fame as a modeling agency";
- Elite Licensing Company S.A., Elite Model Management v. Mathias Baumgartner,WIPO Case No. D2007-1334 where the WIPO Panelist also referred to "the undisputed worldwide reputation of the Complainants’ business" in order to reach a finding in their favor;
- Elite Licensing Company S.A., Elite Model Management, Elite Model Management S.A. v. Publicity Works,WIPO Case No. D2008-1487 where the WIPO Panelist also mentioned that "the ELITE marks, the Elite group of companies and their activities are well-known worldwide";
- Elite Licensing Company SA et Elite Model Management contre Computing Services & Security SA et SU Sens Unique SA,WIPO Case No. D2010-0493 where it is reminded that the notoriety and reputation of the trademarks of the Complainants, and in particular of the word elite, have already been recognized in other disputes decided in favor of the Complainants and it is considered that all the circumstances of the case, and in particular the admission by the second Defendant of the graphical similarity of the word elite as shown on the website accessible under the litigious Domain Name, on the one hand, and the trademarks of the Complainants, on the other hand, as well as the terminological bride-building on the litigious website by using words which describe the services of the Complainants, make it appear clear to the Panel that the choice of the Defendants to include the word elite in the Domain Name was made with the aim to create a connection with the Complainants and to benefit from the prestigious image enjoyed by the latter (provided as Annex 16 to the Complaint);
- Elite Licensing Company SA, and Elite Model Management v. Ruben Arcas Paterna,WIPO Case No. D2010-0653 where it is stated that “the disputed domain name wholly incorporates the ELITE Marks, which are well-known in connection with model agency services” and that “the ELITE Marks are well-known internationally”.
Moreover, beginning in 1983, the Elite Group has jointly organized the renowned model competition, ELITE MODEL LOOK. Lastly, since the mid-1990s, the Elite Group has extended its activities beyond model management to related fields, such as fashion and beauty care.
The disputed domain name was registered on June 11, 2002. 5. Parties’ Contentions A. Complainant
Complainants state that the disputed domain name is confusingly similar to their ELITE trademarks and to the trade names ELITE and ELITE MODEL MANAGEMENT, in which Complainants have rights.
Complainants allege that the main and most distinctive element of Complainants’ trademarks is the word ELITE; it is always the first word to be seen and to be pronounced, and it is the most distinctive and dominant element of all of Complainants’ marks.
Complainants further allege that the other elements of Complainants’ marks are only of secondary nature, e.g,. Elite Model Management is the company name of the second Complainant and is understood as such, MODEL(S) is a term that refers to Complainants’ activities and is descriptive, as are the terms “management”, “look” or “fashion” (which are also descriptive of Complainants’ activities).
Complainants contend that the differences between the disputed domain name and Complainants’ ELITE marks consist in the adjunction of the suffix ”.com”, on the one hand, and of a generic/descriptive term relating to the field in which Complainants operate, i.e., Complainants run a model agency. Complainants further inform that it should also be noted that a hyphen separates the generic/descriptive term MODEL from the term ELITE.
Complainants contend that the adjunction of the suffix “.com" is of no significance and must not be taken
into account for the purpose of the present comparison. Complainants also contend that the mere adjunction, within the disputed domain name, of generic/descriptive terms does not cast aside the likelihood of confusion between the prior trademarks and the disputed domain name.
Complainants allege that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Complainants inform they have carried out searches for possible trademarks consisting of the term ELITE in the name of Respondent, on the trademark Registries available through the SAEGIS custom search database, and that no such trademarks were found. Thus, Complainants affirm that Respondent does not have any trademark rights in the disputed domain name and/or any of its components.
Complainants assert that prior to notifying Respondent of this dispute, Respondent was not using the domain name in connection with a bona fide offering of goods or services, nor had he made preparations to do so. Complainants inform that the disputed domain name pointed in the past, and still points as of the date of this decision, towards an active website which displays commercial content (domain parking), i.e., the challenged domain name is exploited through a pay-per-click scheme.
Complainants further assert that the sponsored links which are displayed on the website accessible under the disputed domain name are for competitors of Complainants, on the one hand, and for third party goods and services which are also covered by Complainants’ prior trademarks, on the other hand. Complainants conclude that this is neither a legitimate use of the disputed domain name, nor is there a use or even intention to use the domain name in connection with a bona fide offering of goods and Services.
Complainants inform they have never assigned, licensed, sold or transferred any rights in their ELITE trademarks to Respondent. Complainants inform they have not granted Respondent permission or consent to use or register their marks as a domain name.
Complainants assert that Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. Complainants contend that, instead, Respondent prevents Complainants from making use of the disputed domain name for their own offers, and draws Complainants’ clients to a website, advertising for third parties, including for competitors of Complainants.
Complainants allege that Respondent’s use of the disputed domain name diverts Internet users who intend to access Complainants’ offering of goods and services when they type the disputed domain name in their web browser and that this is not a legitimate use.
Also, Complainants allege that due to the fact that its ELITE marks are famous all over the world in relation to many goods and services (as demonstrated above), Respondent cannot have ignored that he was registering a domain name which infringes on the rights of Complainants, so that Respondent has no legitimate interest in the disputed domain name.
Regarding bad faith registration and use, Complainants allege that, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of his website.
Complainants allege that, in the present case, where Complainant’s marks are nearly identical to the textual string of the domain name and both are used in the course of trade to designate similar goods and services (including by referring to Complainants’ direct competitors), the risk for Complainants to suffer damage and to lose valuable business is also self evident.
Also, Complainants assert that it should be considered that the current websites linked to the disputed domain name do amount to an unfair exploitation of since Respondent receives payment for every click on a link displayed on this website, thus unjustly enriching himself to the detriment of Complainants and also diluting Complainants’ notorious trademarks. Complainants conclude that this is a direct attempt to profit from Complainants’ goodwill and reputation.
Moreover, Complainants assert that the registration without authorization of a domain name that is identical to a famous trademark, as is ELITE, is in itself evidence of bad faith.
Furthermore, Complainants allege that since Complainants’ rights in the ELITE trademarks have been established for a very substantial period prior to the registration of the disputed domain name, basic searches would have revealed these rights (such as a simple search on the G search engine on the words used).
In addition to this, Complainants state that their trademarks are globally well renowned, as discussed above and even if Respondent failed to conduct appropriate searches, it is highly unlikely that he would have been unaware of Complainants’ pre-existing rights when registering the disputed domain name. Complainants conclude that it is rather unlikely that Respondent would have randomly registered the disputed domain name comprising a descriptive/generic term which so well describes Complainants.
Finally, Complainants conclude that the bad faith of Respondent can, more likely than not, also be inferred from the fact that the disputed domain name was registered anonymously. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The panel finds that Complainants’ registered trademarks are distinctive in their field of activity and have reached strong reputation and notoriety in many countries. The Panel finds that the disputed domain name is confusingly similar with Complainants’ ELITE registered trademarks and company name. The only difference between Complainants’ registered trademark and the disputed domain name is the addition of the generic term “model”, which is a term that refers to Complainants’ activities and is merely descriptive.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain name as being distinct from Complainants’ registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel finds that this similarity is likely to increase the possibility of confusion or mistaken association and mislead Internet users who search for Complainants’ services and divert them to the disputed domain name. Moreover, the Panel notes that several of Complainants’ marks contain text comprising the words “elite model” with an additional term or phrase (see above, Section 4). In this regard, the Panel finds that the addition of the world “model” further enhances the risk of confusion or mistaken association.
The Panel, therefore, finds Complainants have established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainants have alleged that Respondent has no rights or legitimate interests in respect of the disputed domain name. Taking into consideration that Respondent has failed to respond to the Complaint, the Panel will analyze the facts and circumstances brought by the Complainants to verify if Respondent lacks rights and legitimate interests in the disputed domain name.
As a matter of a fact, the Complainants have made a prima facie case in support of their allegations and, due to this, the responsibility of coming forth with evidence shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the UDRP complaint was filed, the disputed domain name was associated with a website that displayed pay-per-click advertisements of third parties, including competitors of the Complainants. The Panel finds that this is not a bona fide offering of goods and services.
Thus, in view of the above, the Panel finds that the Complainants have established the second condition of the paragraph 4(a) of the policy. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
Respondent has intentionally registered the disputed domain name which totally reproduces Complainants’ well-known trademarks. By the time the disputed domain name was registered, it is highly unlikely that the Respondent would have been unaware of the Complainants’ pre-existing rights in their trademarks when registering the disputed domain name.
Complainants’ allegations of bad faith are not contested. The evidence provided by the Complainants confirms that they had long been using their ELITE registered trademarks when the disputed domain name was registered. Moreover, the Complainants submitted consistent evidence that their trademarks are well-known. The Panel finds that the Respondent must have been aware of the Complainants’ rights in their marks and, further, that Respondent knowingly infringed the Complainants’ trademarks when it registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that, “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 confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”, Policy paragraph 4(b)(iv). Respondent used Complainants’ well-known trademarks to attract Internet users to Respondent’s website that displayed pay-per-click advertisements of third parties, including competitors of Complainants. This is evidence of the intention of Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In light of these facts, the Panel finds that Complainants have established the third element of the Paragraph 4(a) of the Policy. 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.
Eduardo Machado
Sole Panelist
Dated: October 13, 2010
Full & Egal Universal Law Academy