Complainant is Hachette Filipacchi Presse of Levallois Perret, France, represented by ipSO société selàrl, France.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Isaac Gelin, For Haiti, of Winnipeg, Manitoba, Canada. 2. The Domain Name and Registrar
The disputed domain name (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 20, 2018. On September 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 21, 2018, 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 Complainant on September 24, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 26, 2018.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 30, 2018.
On November 9, 2018, the Center appointed Roberto Bianchi as the sole panelist in this matter. 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
Complainant’s ELLE magazine is a worldwide well known fashion, beauty and lifestyle magazine. The magazine was first published in France in 1945. Presently, the magazine is published in numerous countries, totalizing 46 editions specifically directed to each local market.
In 1989, a Quebec edition in French was launched. In 2009, 805,000 copies of the ELLE Quebec magazine were sold. In 2001, an English-language version of the magazine has been launched in Canada that is regularly published each month since this date. In 2009, 1,489,000 copies of the ELLE Quebec magazine were sold. Each ELLE Quebec and ELLE Canada magazine is relayed through a website with a substantial audience.
Complainant owns numerous trademark registrations for ELLE in equally numerous jurisdictions, filed before November 23, 2010, the date of registration of the Disputed Domain Name. These prior trademarks are related to the fields of printed matters, publications, media in general and associated merchandise. For the purposes of this proceeding, the following registrations are relevant:
- Canadian trademark ELLE, Reg. No. TMA373808, registered on September 28, 1990, covering products of International Class 16.
- Canadian trademark ELLE, Reg. No. TMA163349, registered on June 6, 1969, covering products of International Class 16.
- Canadian trademark ELLE, Reg. No. TMA782955, registered on November 22, 2010, covering products and services in International Classes 9, 16, 24. 35, 38, 41, 42, 43, 44 and 45.
- Canadian trademark ELLE, Reg. No. TMA780348, registered on October 22, 2010, covering products and services in International Classes 3, 9, l6, 18, 21, 35 and 41
Complainant also owns various domain names containing the trademark ELLE, resolving into 46 local websites, including , , , , , , , , , , , , etcetera.
The Disputed Domain Name was registered on November 23, 2010. Previously the Disputed Domain Name resolved to a website displaying content relating to fashion. Currently, the Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
The Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant owns the well-known trademark ELLE, with broad registration worldwide.
The well-known trademark ELLE is directly incorporated in the Disputed Domain Name. The addition of the term “moi” (which means “me” in French) and the “.com” generic Top-Level Domain is not sufficient to distinguish the signs and therefore to avoid any likelihood of confusion in the public’s mind. The Disputed Domain Name presents a likelihood of confusion on visual, phonetic and intellectual plans with the prior trademark ELLE. The likelihood of confusion is all the more characterized that the prior trademark is an international trademark registered, used and well known for a fashion magazine.
Respondent has no rights or any legitimate interests over the Disputed Domain Name to promote fashion, fashion models and fashion magazines. Complainant has not licensed or otherwise permitted Respondent to use any of the ELLE marks or to apply for or use any domain name incorporating any of its marks. As of March 28, 2011, Complainant has granted Hearst International an exclusive license to use the trademark ELLE for fashion and lifestyle magazines.
The Disputed Domain Name was registered and is being used in had faith. Complainant’s prior trademark ELLE is well known worldwide and in particular in Canada in relation to fashion and a fashion magazine. Respondent could not ignore the strong reputation of the trademark ELLE when he purchased the Disputed Domain Name, nor could he have ignored the widespread use of ELLE on the Internet, in particular for a fashion magazine and in the fashion industry, as ELLE is clearly associated with fashion models. Moreover, Respondent has used the Disputed Domain Name in exactly Complainant’s well known graphical presentation, unchanged over 70 years, i.e. he has represented the sign as ELLE PHOTOGRAPHY. Respondent is using ELLE for the same photographic, editorial and advertising services in relation to fashion, a fashion magazine and fashion models. In so doing, Respondent could be passing himself off as Complainant. Indeed, Complainant has established a business in the field of fashion, by editing magazines that offer advertising space. Indeed, as indicated, ELLE is the No. 1 magazine in the market for the offering of advertising space (28% of the market before VOGUE with 16% (2014 figures)). Moreover, the digital extension of the ELLE magazine, through dedicated websites, social media applications, videos presentation on YouTube TV channels, are in every way identical to the presentation Respondent is making of his own activities.
Respondent, when registering the Disputed Domain Name was seeking to take advantage of the positive image and tremendous reputation developed by Complainant in its ELLE mark. Complainant his convinced that the Disputed Domain Name has been registered only for attracting, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s well known mark as to endorsement of Respondent’s website.
Respondent was put on constructive notice as to the exclusive rights of Complainant. Indeed, on February 23, 2013, Respondent was notified by the Canadian Intellectual Property Office, in relation to his application to register the Canadian trademark ELLE & MOI, Application No. 1575444, that “The Examiner remains of the opinion that the subject mark is confusing with the registered trademark Nos TMA163349, TMA279058 TMA 373808, TMA378319, TMA386623, TMA390411, TMA479233, TMA479346, TMA1494080, TMA 497620, TMA497884, TMA613605, TMA638248, TMA 780348, TMA782 955 and co-pending and confusing application trademark Nos. 1464446; 1546008; 1546700; 1565552. Therefore, the objection pursuant to paragraph 12(1)(d) of the Trade-marks Act is maintained for reasons as discussed below. Annex 21 to the Complaint. Subsequently, on July 30, 2015, Complainant also opposed Respondent’s trademark application No. 1575444 for ELLE & MOI. Respondent did not defend the application, which was deemed abandoned. Respondent therefore did not consider he had a legitimate right to use and register “Elle & Moi”.
Additionally, Complainant has repeatedly sent email and registered letters at all available email and physical addresses, to no avail. Moreover, bad faith can be seen by the fact that subsequent to the notification of confusion, to the opposition and to the cease and desist letter, Respondent started to sell variations of the “Elle & Moi” magazines, on March 2017, presenting these new variations either as an international magazine or a Canadian version and, in so doing, passing itself off as Complainant and, for deliberately causing confusion in the market.
Respondent has chosen to use the trademark ELLE only in order to create a likelihood of confusion to the consumer who will immediately identify the well- known trademark ELLE and could be misled into believing there is some association with Complainant’s mark as an emanation of or a derivation from or an affiliation to the prior trademarks, or some sort of arrangement with Complainant.
The well-known status of the trademark ELLE is such that the only conclusion can be that Respondent deliberately chose to incorporate this trademark in the Disputed Domain Name to trade off the reputation of the ELLE trademark and thereby attract Internet users to Respondent’s website. Such use of the well-known trademark ELLE in the Disputed Domain Name creates customer confusion or dilution of the mark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has submitted abundant evidence showing that it owns registrations for the ELLE trademark in numerous jurisdictions, including in Canada, the country of residence of Respondent Isaac Gelin. See section 4 above. Therefore, the Panel is satisfied that Complainant has rights in the ELLE trademark for purposes of Policy, paragraph 4(a)(i).
The Panel also notes that in the Disputed Domain Name the trademark ELLE is incorporated in its entirety, with the addition of the term “tmoi”, obviously meaning “et moi” (“and me” in English), where the letter “e” in the French conjunction “et” (“and” in English) was likely omitted for phonetic convenience, given that the term “elle” (“she” in English) ends with an “e”. In the view of the Panel, this addition does not prevent a finding of confusing similarity between the Disputed Domain Name and Complainant’s mark ELLE. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”)
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s trademark ELLE. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name to promote fashion, fashion models and fashion magazines. Complainant has not licensed or otherwise permitted Respondent to use any of its ELLE marks or to apply for or use any domain name incorporating any of these marks. In this regard, Complainant says that as of March 28, 2011 it has granted Hearst International an exclusive license to use the trademark ELLE for fashion and lifestyle magazines.
The Panel notes that on the website at the Disputed Domain Name Respondent has been advertising a magazine entitled “ELLE & MOI”, a title coinciding with the Disputed Domain Name except that the “&” (the ampersand, which is the logogram for the conjunction “and”) is used in lieu of the letter “t”. The content of the website at the Disputed Domain Name includes a solicitation to advertise in the magazine, which in the opinion of the Panel is an imitation of Complainant’s ELLE magazine. Thus, Respondent is profiting from the confusion with Complainant’s ELLE mark and magazine. In the view of the Panel, to the extent that Respondent is clearly attempting at inducing Internet users into confusion, this use of the Disputed Domain Name is neither a bona fide use pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain misleadingly to divert consumers under Policy paragraph 4(c)(iii). In addition, Respondent’s name is “Registration Private, Domains By Proxy, LLC / Isaac Gelin”. In either case, and absent any contrary evidence, Respondent does not appear to be known, commonly or otherwise, by the Disputed Domain Name under Policy paragraph 4(c)(ii). Thus, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Respondent failed to present any arguments in his own favor, or any reasons for having registered the Disputed Domain Name. The Panel concludes that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Several of Complainant’s trademark registrations for ELLE in Canada predate the registration of the Disputed Domain Name. For example, Complainant’s Canadian trademark ELLE, Reg. No. TMA163349, registered on June 6, 1969, covering products of International Class 16, was made over 40 years before the Disputed Domain Name was registered. See section 4 above. Complainant also has shown that its mark ELLE was mentioned in a trademark textbook published in 1999 as an example of a notorious mark, in the same rank of IBM and Coca-Cola. Annex 13 to the Complaint. Further, Complainant reports that in 2010, the year when the Disputed Domain Name was registered, Complainant obtained over EUR 395 million from its publishing of ELLE editions and over EUR 383 million from its licensing of ELLE products. Annex 12 to the Complaint. Complainant also has shown that it had been publishing the ELLE Quebec magazine in French and the ELLE Canada magazine in English much before the Disputed Domain Name was registered.
The Panel shares the view of prior panels that the ELLE trademark is well known in respect of magazines. See e.g., Hachette Filipacchi Presse v. Peter B. King,WIPO Case No. D2010-2089 (“The panel has no doubt that ELLE is a well-known mark for the purposes of the proceedings and the same view is shared by prior panels.”)
In the opinion of the Panel, all these facts strongly indicate that at the time of registering the Disputed Domain Name, Respondent, knew of the ELLE magazine and trademark quite well, and targeted them. In the circumstances of this case, this means that Respondent registered the Disputed Domain Name in bad faith.
As seen above, Respondent has been using the Disputed Domain Name to market his magazine “Elle & Moi”, basically an imitation of Complainant’s well known magazine, and to sell advertising services therein. In the view of the Panel, by using the Disputed Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant’s ELLE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith.
For the above reasons, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 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 cancelled.
Roberto Bianchi
Sole Panelist
Date: November 23, 2018
Full & Egal Universal Law Academy