The Complainant is Elephant P PTE Ltd, of Singapore, represented by Markenizer B.V., Netherlands.
The Respondent is Elephant Parade of New Jersey, United States (the "US"). 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 20, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On September 20, 2011, GoD, Inc. 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 Complainant on September 27, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 2011.
The Center verified that the amended 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 October 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 18, 2011. 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
The Complainant is a Singaporean company involved in the organisation of Elephant Parade (open air art exhibitions of decorated elephant statues) and the subsequent auctioning of such statues, and merchandising of various goods, including painted miniature elephant statues and T-shirts bearing the ELEPHANT PARADE mark, with the objective of attracting public awareness and seeking support for Asian elephant conservation. The Complainant owns registrations for the ELEPHANT PARADE mark internationally, including a US registration for the ELEPHANT PARADE trade mark dated August 7, 2007. The Complainant has also registered various domain names incorporating ELEPHANT PARADE, including , , , and which registrations date from October 28, 2009. Although the ownership of the domain name cannot be ascertained (the relevant WhoIs record contains no registrant details), the content of the website to which such domain name resolves makes reference to the Complainant, which suggests that the Complainant is at least, connected to the operation of such website.
The Respondent is a US company involved in the online sale of clothing, which is created by utilising recycled materials. The Respondent registered the Disputed Domain Name on December 23, 2009. As at the date of this decision, the website to which the Disputed Domain Name resolves (the "Website") displays a basic online clothing store under the name of "The Elephant Parade LLC". 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Name is identical or almost identical to the Complainant's ELEPHANT PARADE mark, in which the Complainant has rights:
(i) the Complainant owns (amongst others) a US trade mark registration No. 3508961 and international registration No. 941495 (which designates the US), which is where the Disputed Domain Name is registered;
(ii) the Disputed Domain Name is (almost) identical or in any event, confusingly similar to the trade name of the Complainant and the word “the” (in the context of the Disputed Domain Name) has no significant meaning;
(iii) the trade marks of the Complainant consist of the words ELEPHANT PARADE and the picture of three elephants, the most dominant part of which is the text "Elephant Parade"; and
(iv) when reproducing a trademark in a domain name, the visual elements are irrelevant, therefore what is left is the text "Elephant Parade", which is identical to the Disputed Domain Name because the word "the" has no separate meaning.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Complainant’s ELEPHANT PARADE trade mark has a worldwide reputation fororganizing parades with elephant statues and the Complainant raises funds after the exhibitions by selling the decorated elephant statues through auctions led by the famous auction houses Sotheby’s of Christies;
(ii) the Complainant also merchandises goods, such as painted miniatures, which are available in shops during exhibitions and on the website “www.elephantp”. T-shirts with the ELEPHANT PARADE device are sold throughout the world via Spreadshirt, including in the US;
(iii) €7 million have been raised in Europe by the Complainant with a result that the mass media has brought the activities of the Complainant to people's attention worldwide;
(iv) the Complainant’s first exhibition was in Rotterdam, the Netherlands in 2007;
(v) the Respondent is a clothing manufacturer for clothing made of recycled materials. The Website gives a somewhat ‘recycled’ impression (as conveyed through) the use of cracked-colour graphics. This ‘recycled’ impression could easily be interpreted as being a link to ‘environmental awareness’, which links to the conservationist activities of the Complainant;
(vi) the Respondent’s company was founded in 2009, two years after the first parade of the Complainant and when the Complainant had already garnered multi mass media attention throughout the world. The Respondent would thus have known about Complainant (at the time of registering the Disputed Domain Name). The Respondent could also have known about the worldwide registered trade marks and domain names of the Complainant, or at least, about the Complainant’s domain name and trade mark registrations in the US;
(vii) the Respondent has no rights in the ELEPHANT PARADE trade mark;
(viii) the Respondent could easily have chosen a different company and domain name;
(ix) the Respondent has no activity whatsoever that refers to any business dealing with elephants or parades; and
(x) the Respondent is using the Disputed Domain Name in a commercial setting with an intent for commercial gain and misleading the public in order to divert consumers of the Complainant.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) by using the Disputed Domain Name, the Respondent intentionally attempts to attract for commercial gain, internet users to the Respondent’s Website;
(ii) by creating a likelihood of confusion with the Complainant’s mark as to the source as well as creating the impression of being affiliated or a sponsor or endorsed by my client’s mark the Respondent is acting in bad faith;
(iii) the Respondent has chosen the Disputed Domain Name to divert traffic from the Complainant to the Respondent’s Website and therefore attract business; and
(iv) by using the Disputed Domain Name the Respondent is clearly taking advantage of the worldwide repute of Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the ELEPHANT PARADE mark on the basis of its registrations for such mark in the US dating from August 7, 2007.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, should be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd,WIPO Case No. D2006-0767).
The Disputed Domain Name incorporates the ELEPHANT PARADE portion of the Complainant's mark in its entirety and in terms of both visual and aural characteristics, is an identical reproduction of the Complainant’s trade mark, and the inclusion of the non-descript article "the" does nothing to detract from such identity.
The Panel notes that the Complainant's trade mark registrations for ELEPHANT PARADE are composite word and device marks (featuring the words "elephant parade" along with a device comprised of three elephants), and this is the form in which the trade mark is displayed on the “www.elephantp” website. While the Disputed Domain Name is therefore not identical to the Complainant's trade mark, this is of no practical significance given that it is not possible for domain names to include design elements, and Internet users seek websites by typing in familiar words or names (see Park Place Entertainment Corporation v. Mike Gorman,WIPO Case No. D2000-0699.
The Panel considers that the text "elephant parade" is the distinctive and dominant portion of the Complainant's trade mark. Further, the term "elephant parade" (being part of the Complainant's company name) is used widely on the “www.elephantp” website and is the term that consumers would likely use when referring to the Complainant. The Panel finds that the Disputed Domain Name is identical to the dominant portion of the Complainant's ELEPHANT PARADE mark and Internet users who are familiar with the Complainant's trade mark would be likely to assume that the Disputed Domain Name is related to the Complainant in some way (see Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd.,WIPO Case No. D2003-0654.
The Panel accordingly finds that the Disputed Domain Name is identical, or at least confusingly similar, to the ELEPHANT PARADE mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant submits that the Respondent does not own any registrations for trade marks incorporating ELEPHANT PARADE and that the Respondent could have easily chosen a different company and domain name, given that there is no evidence to suggest that the Respondent is involved with any activities dealing with elephants or parades. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that it does possess such rights or legitimate interests. As no Response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant's evidence.
The Panel accepts that the Complainant has neither licensed nor otherwise authorised the Respondent to use the "elephant parade" name in any way. The rights or legitimate interests in the Disputed Domain Name can thus only be conferred on the Respondent if it can be shown that the Respondent is making legitimate noncommercial or fair use of the Disputed Domain Name, has been commonly known by the Disputed Domain Name, or prior to the filing of the Complaint, used the Disputed Domain Name in connection with a bona fide offering of goods or services. The fact that the Respondent uses the Website as an online clothing store precludes a finding that the Disputed Domain Name is being used for legitimate noncommercial use. There is also no evidence that the Respondent has been commonly known by the Disputed Domain Name, and given that the name "elephant parade" is not descriptive of any of the goods or services offered on the Website or otherwise related to the Website content (beyond a picture on the Website home page displaying the eye of an elephant), the Panel considers it unlikely that any such evidence exists. In respect of the Respondent's use of the Website in connection with offering for sale clothing and accessories for women, the Panel accepts that such use can, in appropriate circumstances, confer rights and legitimate interests on a respondent in respect of a relevant domain name. However, no such circumstances present themselves in the current case, in respect of which the Panel's findings of bad faith on the part of the Respondent (discussed below), precludes a finding that any offering of goods or services on the Website is bona fide (see Madonna Ciccone p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847; and Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253).
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
Evidence of bad faith includes constructive notice of a trade mark at the time of registration of a domain name by a respondent (see Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517 and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113, in support of a finding of bad faith registration based on constructive knowledge of the complainant’s mark(s) on the part of the respondent). The Panel notes that a search for “the elephant parade” on each of the search engines Google and Yahoo! reveals the Complainant and the related website (at www.elephantp) as the top search result, with ensuing hits also largely related to various pages concerning the Complainant and this website. On the basis of the numerous and worldwide trade mark registrations for the ELEPHANT PARADE mark owned by the Complainant (including trade marks in the US, registered about two years prior to the registration of the Disputed Domain Name), the international scale and public nature of the Complainant's activities both on the Internet and otherwise, the fact that neither the Respondent's Website nor the goods or services offered therein have any connection with elephants or parades, and the fact that the phrase "the elephant parade" has no common figurative meaning or application, the Panel accepts that is more likely than not that the Respondent had knowledge of the Complainant and its ELEPHANT PARADE mark at the time of registering the Disputed Domain Name, such that the registration was made in bad faith.
Given that the Website is operated on a commercial basis (as an online clothing and accessories store), bad faith use can also be inferred on the basis that the Respondent, most likely being aware of the fame of the Complainant and its ELEPHANT PARADE mark, and selling goods having no connection with either elephants or parades, is using the Disputed Domain Name to capitalise on the trade mark value of the Complainant's ELEPHANT PARADE mark, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Website or the products sold thereon, and thereby attempting to attract Internet users to the Website, for commercial gain. The absence of plausible reasons as to why an online retailer of women's clothing and accessories would choose to conduct its business under the name "the elephant parade", as opposed to (for instance) a name that more apparently reflects the purported environmentally-friendly nature of the products offered for sale on the Website, is indicative of the fact that the primary purpose of the Respondent's use of the Disputed Domain Name is to trade off the fame of the Complainant's mark, which constitutes clear evidence of bad faith use on the part of the Respondent. Further support for such an inference can be found in the fact that the Respondent previously operated a Facebook page, likewise under the name "the Elephant Parade", and likewise in relation to the display and sale of clothing and accessories for women, which page has since been taken down by Facebook (which according to the Complainant, was pursuant to the Complainant's takedown request to Facebook on the ground of infringement of its trade mark registration for ELEPHANT PARADE in the US).
In these circumstances, the Panel finds that it is clear that the Respondent has registered and is using the Disputed Domain Name in bad faith, and element 4(a)(iii) of the Policy has been satisfied. 7. Decision
For 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.
Gabriela Kennedy
Sole Panelist
Dated: December 1, 2011
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