The Complainant is Hachette Filipacchi Presse of Levallois Perret, France, represented by ipSO société selàrl, France.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Al-Rahim International of Khaldiya, Kuwait. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2014, the Registrar 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 26, 2014 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, 2014.
The Center verified that the Complaint together with 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 September 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2014. The Center received communications from the Respondent on September 28, 2014 and on September 29, 2014.
The Center appointed Richard Hill as the sole panelist in this matter on October 24, 2014. 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 owns the well-known mark ELLE, registered in 1964. That mark is used to market various goods and services, including clothes, around the world, including in Kuwait.
The disputed domain name was registered in 2000.
The Respondent does not have any license or other authorization to use the Complainant's mark or to sell its products.
The Respondent is using the disputed domain name to resolve to a website that is under construction. The Respondent did not provide any specific explanation of what products and services it intended to offer under the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant alleges that it is the owner of the well-known trademark ELLE, with broad registration worldwide, and that it has been used for many years for the magazine ELLE, which is internationally well known, being distributed in over 90 countries. That magazine has been published since 1945 and 45 different editions exist, specifically directed to the needs of different markets. The magazine is well known in the Middle East. Two editions are specifically marketed in Kuwait. The French and United States editions were distributed in Kuwait as early as 1995. The Complainant operates numerous popular websites whose domain names incorporate the mark ELLE.
Based on the strength of the magazine's reputation, says the Complainant, its name has been used by the Complainant to market products and services in other areas, such as food, home décor, fashion accessories, travel, etc. Clothes and shoes, watches, perfumes, glasses, and beauty appliances are marketed in Kuwait under the mark ELLE by licensees of the Complainant, including in physical stores.
The Complainant cites previous UDRP cases in which it was found that its mark is well known.
According to the Complainant, its international mark was registered in 1964, and its Kuwaiti mark was registered in 1992. The disputed domain name was first registered in 2000 and the Respondent acquired it in 2014.
The Complainant states that the disputed domain name is confusingly similar to its mark in the sense of the Policy, citing UDRP precedent to support its position.
Further, says the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. It is not known under the name "Elle" and the website at the disputed domain name does not offer any products or services related to the disputed domain name.
According to the Complainant, its mark is well known, including in Kuwait. The Respondent could not have been unaware of the Complainant's mark or of its use in Kuwait and internationally. The Complainant argues that the Respondent's use of its mark can create customer confusion or dilution. The Complainant asserts that the Respondent is attempting to trade off the reputation of the Complainant's mark, thereby attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark. B. Respondent
The Respondent did not submit a formal Response. It did however respond as follows.
The Respondent disputes that it has acted unlawfully in any way. It disputes that the Complainant's trademark is well known in its region. The Respondent asserts that the word "elle" is a "generic name" and finds it "unacceptable that a generic name is to be limited to a company claiming to own it all over the world". The Respondent argues that under the UDRP, the use of generic words cannot be limited.
The Respondent states that it followed all required procedures when it acquired the disputed domain name. It is a general trading and contracting company and does not buy domain names for trading purposes. Its sole aim was related to its business activities. 6. Discussion and Findings A. Identical or Confusingly Similar
It is clear to the Panel that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant's mark, because it contains the mark and merely adds the common word "boutique" (which relates to the Complainant's area of activity) to form the disputed domain name. See PACCAR, Inc. v. Enyart Associates and T, LLC, WIPO Case No. D2000-0289; see also Quixtar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
The Panel holds that the Complainant has satisfied its burden of proof under this element of the Policy. B. Rights or Legitimate Interests
The Panel is satisfied, based on the evidence before it, that the Respondent does not have any license or other authorization to use the Complainant's mark or to sell its products. The Respondent is using the disputed domain name to resolve to a website that is under construction. The Respondent states that it plans to offer some products and services on the website to which the disputed domain name resolves, but does not explain in any detail what those would be.
Where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937. Thus, it cannot be said that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel holds that the Complainant has satisfied its burden of proof under this element of the Policy. C. Registered and Used in Bad Faith
The Respondent contests that the Complainant's mark is well known in its region. On the basis of the evidence before it, the Panel disagrees, and holds that the Respondent, which admits to be being a trading company, must have known of the Complainant's mark and activities in its region.
The Respondent states that the Complainant's mark is a "generic name that cannot be owned solely to [sic] anyone". According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"): "Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)."
The Respondent has not presented any detailed explanation or evidence of the types of products and services it plans to offer under the disputed domain name. Nor does it explain why it wishes to use a domain name incorporating the Complainant's well-known mark. In accordance with paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when it acquired the disputed domain name in 2014 and that as such its registration was undertaken in bad faith.
Given that the Complainant's mark is well known, and is used to market clothes and other products commonly sold in stores or "boutiques", it is clear, in the Panel's view, that its use in the disputed domain name is meant to falsely suggest that the website at the disputed domain name is somehow associated with the Complainant. The Panel finds that this is an obvious abuse of the Complainant's mark, in particular because it can lead to dilution and tarnishment. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake PartyCase,WIPO Case No. D2000-1415; see also Motorola, Inc. vs NewGate Internet, Inc.,WIPO Case No. D2000-0079.
Further, it is clear to the Panel that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and the Complainant's mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159.
The Panel holds that the Complainant has satisfied its burden of proof under this element of the Policy. 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 disputed domain name be transferred to the Complainant.
Richard Hill
Sole Panelist
Date: October 27, 2014
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