1.1 The Complainants are Elite Licensing Company SA of Fribourg, Switzerland and Elite Model Management of Paris, France (the “Complainants”) represented by Cabinet Degret, France.
1.2 The Respondent is Sencea Brock of Staten Island, New York, United States of America (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed domain name (the “disputed Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2010. On October 14, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On October 14, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 The Center verified that 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”).
3.3 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 October 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2010.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on November 23, 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
4.1. The Complainants are Elite Licensing Company SA, a company whose head office is at Fribourg, Switzerland and Elite Model Management with its head office at Paris, France. Both of the Complainants belong to the same holding company known as Elite World SA of Luxemburg. The Elite group founded in France in 1972 operates one of the biggest and most renowned model agency in the world together with the company Elite Model Management Corp. in the United States of America and in Canada. The first intellectual property rights of the Elite agency were held by the French company, the Elite Model Management, the second Complainant, the trade name and sign board of which are “ELITE” and “elite”. Since 1998 the merchandising activities of the group have been delegated to Elite Licensing Company SA, the first Complainant. These days the Elite Group’s activities comprise of three distinct areas: (i) Elite Model Management -a network of model agencies worldwide with close to forty offices on all five continents; (ii) Elite Licensing -merchandising goods bearing the well-known elite logo and (iii) Elite Model Look - an international model competition organized in over fifty countries worldwide with an average of 350,000 participants each year. In order as to carry out the above stated activities the companies in the Elite group and in particular the two Complainants own a large number of Intellectual property rights consisting or comprising of the mark ELITE. Accordingly, the Intellectual Property rights are jointly exploited to the benefit of the entire Elite Group so as to guarantee a common brand image.
4.2 The Respondent is located in Staten Island, New York, United States of America and according to the information provided by the Registrar, the disputed Domain Name was registered on September 16, 2008 and transferred to the Respondent in 2010. 5. Parties’ Contentions A. Complainant
5.1 The Complainants, as part of the Elite group of companies, are the established owners of numerous trademarks ELITE registered all over the world, notably designating model and model agency services with famous modeling icons and the organization of model competitions through which most current supermodels have been discovered. By way of example, some of the Complainants’ national and international trademark registrations as indicated by the list of annexed registration certificates include:
(i) French national trademark ELITE (Elite Model Management) since September 25, 1978 in classes 35, 41 and 42;
(ii) International registration ELITE (Elite Model Management) Benelux, Spain and Italy since December 6, 1978 in classes 35, 41, and 42;
(iii) Community trademark registration ELITE MODEL LOOK since December 20, 1999 in class 41 etc.
5.2 The Complainants therefore contend that the disputed Domain Name is confusingly similar to the individual ELITE trademarks, as well as, to the trade names Elite and Elite Model Management, in which the Complainants have rights. The Complainants state that the most distinctive and dominant element of the Complainants’ trademarks is the word ELITE which is the first word to be seen and to be pronounced, while the other elements of the Complainants’ marks are only of a secondary nature. For instance it is said, Elite Model Management is the company name of the second Complainant, while the words Model and Management are descriptive of the Complainants’ activities.
5.3 The Complainants therefore assert that the addition of the suffix “.com”, and the addition of hyphens separating the words Elite and Model on the one hand and “Model” and “Agency”, does not sufficiently render the disputed Domain Name different from the Complainants’ ELITE trademarks. In this regard, the Complainants rely on a number of cases including Elite Licensing Company SA and Elite Model Management v. Elite Ltd.,WIPO Case No. DCC2007-0004 and Accor v. Winston Minor,WIPO Case No. D2003-1002.
5.4 The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name in that: (i) searches for possible trademarks consisting of the term ELITE through the SAEGIS custom search database did not disclose any trademarks in the name of the Respondent; (ii) prior to the notification of this dispute the Respondent was not using the disputed Domain Name in connection with a bona fide offering of goods or services nor made preparations to do so; (iii) the Complainants firmly believe that the Respondent has never been and is not currently known by the disputed Domain Name; (iv) the Complainants have never assigned, licensed or transferred any rights in their ELITE trademarks to the Respondent or granted the Respondents consent to use their marks or similar marks as a domain name; (v) the Respondent does not make a legitimate noncommercial use of the disputed Domain Name instead the Respondent diverts Internet users and clients who intend to access the Complainants’ offering of goods and services to websites of competitors of the Complainants; and (vi) the Respondent could not have been unaware that the Complainants’ mark ELITE being famous all over the world and the registration of the disputed Domain Name would infringe on the rights of the Complainants.
5.5 The Complainants in support of the contentions in paragraph 5.4 above have placed reliance on a number of cases including in particular Elite Licensing Company SA and Elite Model Management v. James Fleming, DRS No. 8765 and assert that the Respondent lacks any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 3(b)(ix)(2) of the Policy.
5.6 With regards to registration and use in bad faith, the Complainants submit that the Respondent by registering the disputed Domain Name has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship affiliation or endorsement of the Respondent’s website. The Complainants further contend that the Respondent’s current website linked to the disputed Domain Name does amount to an unfair exploitation of the Complainants’ marks as the Respondent more likely than not receives payment for every click on a link displayed on the Respondent’s website thereby, engaging in unjust enrichment to the detriment of the Complainants. Further or in the alternative, the Complainants submit that the registration of a domain name without authorization that is identical to the Complainants’ famous trademarks, as is ELITE, is in itself further evidence of bad faith.
5.7 In this regard, the Complainants refer to the decisions in PepsiCo, Inc v. Paul Swider,WIPO Case No. D2002-0561 and Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226. B. Respondent
5.8 The Respondent did not reply to the Complainants’ contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainants must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; (iii) and that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainants must establish the existence of each of these three elements in the proceedings. A. Identical or Confusingly Similar
6.3 The Panel finds without any hesitation and on the unchallenged evidence of the Complainants, that the disputed Domain Name, namely , is confusingly similar to the Complainants’ ELITE trademarks, as well as to the trade names Elite and Elite Model Management in which the Complainants have established exclusive rights worldwide including in France and in the United States of America. Undoubtedly, the disputed Domain Name incorporates the most distinctive and dominant element of the Complainants’ trademarks which is the word ELITE. The Panel is thus satisfied, as the Complainants contend that the addition of: (i) the suffix “.com”; (ii) two generic or descriptive terms relating to the field in which the Complainants operate; and (iii) hyphens between the words “elite” and “model” on the one hand and “model” and “agency” do not in any way sufficiently distinguish the disputed Domain Name from the Complainants’ ELITE trademarks. Equally, the Panel is satisfied that the likelihood of confusion in the minds of Internet users and clients of the Complainants, is as the Complainants assert, not in any way prevented or reduced.
6.4 The Panel draws support from a number of relevant decisions cited by the Complainants, in particular the case of Elite Licensing Company SA and Elite Model Management v. Elite Ltd., supra where the panel in upholding the Complainants’ claim and transferring the domain name in that case, namely to the Complainants on the basis inter alia of confusing similarity, found that the respondent registered the domain name with both the infringing use and the intention to misrepresent an association with the Complainants in mind. Also relevant is the case of Elite Licensing Company SA and Elite Model Management v. Ruben Arcas Paterna,WIPO Case No. D2010-0653 where the panel in upholding the claim of the Complainants and transferring the domain name, namely to the Complainants, on the basis that it was confusingly similar to the Complainants’ marks, held further, that the domain name wholly incorporates the ELITE marks which are well known internationally in connection with model agency services despite the addition of a hyphen between the word “agencia” and “elite” by the Respondent.
6.5 Accordingly, the Panel finds that the Complainants have established that the disputed Domain Name is confusingly similar to the Complainants’ ELITE trademarks in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 The Panel finds that the Respondent has failed to provide any evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Complainants assert that the Respondent was not using the disputed Domain Name in connection with a bona fide offering of goods or services nor had preparations been made to do so nor was the Respondent making a legitimate noncommercial or fair use of the disputed Domain Name; more so, as the disputed Domain Name pointed in the past and still points towards an active website which displays commercial content and is exploited through a pay-per click scheme for commercial gain. The Panel is therefore satisfied that the Respondent has failed to comply with stipulated requirements necessary to establish the bona fide offering of goods and services as stated in the case of Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903 and contrary to paragraph 4(c)(i) of the Policy.
6.7 The Complainants submit further that the Respondent has never been known by the disputed Domain Name and or that there is any evidence of legitimate noncommercial or fair use contrary to paragraph 4(c)(iii) of the Policy. The Panel is satisfied that the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The Respondent has not rebutted such prima facie case.
6.8 The Panel is therefore satisfied that the Complainants have established that the Respondents has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.9 As regards the question of bad faith registration and use, given the circumstances of this case, the Panel finds that the Respondent registered the disputed Domain Name in bad faith and continued to use it in bad faith. The Respondent has been unable to refute a number of factors that the Panel has taken into account in this regard. First and foremost, the Panel finds that the Respondent knew or ought to have known of the Complainants worldwide exclusive rights in the ELITE trademarks held since 1972. The Panel is indeed satisfied that the registration of the disputed Domain Name was not just a random registration of domain names as the Respondent could not possibly have been unaware of the existence world wide of the protected exclusive rights of the Complainants. As the Complainants assert, a simple search would have revealed those rights prior to the Respondent’s acquisition of the disputed Domain Name. The Complainants’ reliance on earlier UDRP decisions such as PepsiCo.Inc. v. Paul J Swider, supra and Parfums Christian Dior v. Javier Garcia Quintas and C, supra is most relevant in the circumstances as those cases support the well founded submission that a respondent’s mere registration of a domain name that is identical or confusingly similar to a complainant’s famous trademark, without consent or authorization, may be of itself evidence of bad faith. Secondly, the Respondent has not denied the Complainants’ assertion that the Respondent has intentionally attempted to attract for commercial gain Internet users to the website nor has the Respondent denied the likelihood of receiving payment for every click on the link on the website linked to the disputed Domain Name, therefore engaging in unjust enrichment to the detriment of the Complainants and to the dilution of the Complainants’ famous trademarks. Thirdly, as earlier indicated the Panel draws adverse inferences from the failure of the Respondent to respond to correspondence arising from this dispute and the failure to submit a response to the dispute within the prescribed time limits in accordance with paragraph 5(a) of the Rules.
6.10 The Panel therefore finds that the Complainants have established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy. 7. Decision
7.1 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 Complainants forthwith.
Ike Ehiribe
Sole Panelist
Date: December 7, 2010
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