The Complainant is Elite Licensing Company SA of Paradiso, Switzerland, represented by Watermark Intellectual Property Lawyers, Australia.
The Respondent is Michael Francis t/a Elite Model Management Australia of Paddington, Sydney, New South Wales, Australia. 2. The Domain Names and Registrar
The disputed domain names , and (the “Disputed Domain Names”) are registered with PlanetDomain Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2015. On February 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 4, 2015, 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.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 March 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2015. The due date for filing a Response was extended until March 29, 2015. The Response was filed with the Center on March 29, 2015.
The Complainant filed a supplemental filing on April 16, 2015.
The Center appointed John Swinson as the sole panelist in this matter on April 9, 2015. 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 Elite Licensing Company SA, a Swiss company. The Complainant is a subsidiary of Elite World SA and a member of the Elite Group of companies. The Complainant refers to these businesses collectively as the “Elite Business”.
The Elite Business is a modelling agency, founded in 1972. It has three principal business divisions (Elite Management Modelling Agency, Elite Licensing, and Elite Model Look). The Complainant conducts the annual “Elite Model Look” competition and has represented supermodels such as Claudia Schiffer, Naomi Campbell and Gisele Bundchen. The Elite Business also represents many Australian models.
The Complainant owns the following trade marks relevant to this Complaint:
- Australian Registration No. 724084 for ELITE MODEL LOOK (logo), registered June 19, 1996;
- Australian Registration No. 724323 for ELITE MODEL MANAGEMENT (stylised), registered June 21, 1996; and
- Australian Registration No. 1222870 for ELITE (stylised), registered March 20, 2007.
The Respondent is Michael Francis, trading as Elite Model Management Australia. The Respondent has operated a modelling agency since 1988, under various names incorporating “Elite”. He has held the Australian business name “Elite Model Management Australia” since July 2, 2009.
The Respondent registered the Disputed Domain Names as follows:
- on May 13, 2003;
- on May 15, 2003; and
- on May 22, 2003.
The website at the “” domain is currently inactive. The websites at “” and “” have the same content, which promotes the Respondent’s business. Both websites contain the following statement on the “About Us” page:
“The Elite Modeling Agency stems from a heritage of 40 years in the modeling industry. Elite Model Management Australia established in 1988 in conjunction with John Casablancas moving models around the globe and partnering with local Australian agencies. Recently Elite Model Management Australia located in Sydney began representing models in the local market.” 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The domain name is identical to the Complainant’s ELITE MODEL LOOK trade mark. The and domain names are substantially similar to the Complainant’s ELITE MODEL MANAGEMENT trade mark. The final word “management” is merely descriptive.
Each Disputed Domain Name incorporates the Complainant’s ELITE trade mark as the first, essential feature. The additional terms are merely descriptive and do not reduce the risk of confusion between the Disputed Domain Names and the Complainant’s ELITE trade mark.
Rights or Legitimate Interests
The Respondent has not made a bona fide use of the and domain names. The websites at these domain names promote modelling agency services under the marks ELITE, ELITE MODEL MANAGEMENT AUSTRALIA, and ELITE ADORE, using a font that is strikingly similar to the Complainant’s registered trade marks.
The websites contain false statements which imply that the business promoted on the websites is the same as the Elite Business or is otherwise associated with the Elite Business.
The domain name does not resolve to a website that has content. Accordingly, it is not being used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use.
The Complainant has not authorized the Respondent to use the Complainant’s trade marks. The Complainant has not authorized the Respondent to hold himself out as the Complainant’s Australian agent. The Respondent is not commonly known by ELITE or ELITE MODEL LOOK.
Registered and Used in Bad Faith
The Respondent has used the and domain names to promote modelling agency services under trade marks which are identical or confusingly similar to the Complainant’s trade marks. It is clear that the Respondent was aware of the Complainant’s rights at the time he registered the domain names. The Respondent’s clear intention is to create a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, or a service promoted on those websites.
The passive holding of the domain name does not prevent a finding of bad faith. This domain name was registered around the same time as the other disputed domain names, and incorporates the Complainant's trade marks. The domain name also corresponds with the Elite Business’s famous “Elite Model Look” contest.
The Respondent has failed to respond to a letter of demand from the Complainant, requesting cancellation of the Disputed Domain Names.
Supplementary submissions
Further submissions are warranted in this case. The Respondent has made unsubstantiated accusations and statements that have no bearing on the Complaint. The evidence provided by the Respondent is not the type of documents and advertising typically used in the model agency industry and is insufficient to establish rights or legitimate interests in the Disputed Domain Names.
The Respondent’s claimed dealings and relationships with members of the Elite Business are false. (The Complainant provided two declarations of Elite Business staff to this effect.) The Respondent is not, and has not ever been, part of the Complainant’s network of agencies. B. Respondent
The Respondent made a number of submissions relating to various alleged controversies and scandals involving the Elite Business. Such submissions are not relevant to these proceedings.
The Respondent’s contentions are as follows.
Identical or Confusingly Similar
The Respondent did not make any submissions in relation to this element.
Rights or Legitimate Interests
The Respondent created Elite Model Management in Australia in the 1980s. John Casablancas (the founder of the Elite Business) sought to develop a partnership with the Respondent. Mr. Casablancas granted the Respondent a licence to use the trade marks of the Elite Business (through the US office of the Elite Business). The Respondent is the “Rightful Owner” of the ELITE trade mark in Australia. (Mr. Casablancas recognised the Respondent’s rights “to Challenge Him in Australia.”) The Respondent had a good working relationship with Mr. Casablancas.
After internal changes to the Elite Business, the Respondent was informed by the Complainant in 2004 that he should not have been licensed to use the trade marks and that the Elite Business’ US office did not have the authority to grant such a licence. The Respondent advised that he did not require any permission, and outlined his use of the trade marks.
The Respondent has bona fide interests in all of the Disputed Domain Names. For the past 27 years, he has been “providing Elite Models and other Fashion Production Services directly related to My Elite Model Management Enterprise to a comprehensive & diverse Australian, International & Global Clientele.”
Registered and Used in Bad Faith
The Respondent submits that he has acted in good faith at all times. The Disputed Domain Names were registered to promote his legitimate business. The Complainant is not acting in good faith. It is using “under-handed tactics” to acquire the Disputed Domain Names. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant. A. Supplementary submissions
The Policy contemplates efficient resolution of domain name disputes. Accordingly, the Policy and the Rules only contemplate the filing of a complaint and a response, with strict time limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a Panel. Paragraph 10(b) of the Rules gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence.” Generally, Panels will only accept supplementary filings in “exceptional” circumstances
Here, the Complainant’s supplementary filing offers evidence that the Complainant could not have anticipated would be necessary or relevant at the time it originally filed the Complaint. The additional evidence addresses the existence and nature of any relationship between the parties, which is relevant to the second and third elements of the Policy. The Complainant has presented sufficient justification for its supplementary filing.
In these circumstances, the Panel has accepted and considered the Complainant’s supplementary filing. B. Identical or Confusingly Similar
Paragraph 4(a)(i) provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
The Panel has verified that the Complainant has registered trade mark rights in ELITE, ELITE MODEL LOOK and ELITE MODEL MANAGEMENT.
Second level domains, such as “.”, may be disregarded for the purposes of determining identity or confusing similarity under the Policy (see e.g., Pindan Pty Ltd v. Kre8 Brand Pty Ltd and Different Pty Ltd,WIPO Case No. DAU2013-0039).
The domain name is identical to the Complainant’s ELITE MODEL LOOK trade mark.
The and domain names are substantially similar to the Complainant’s ELITE trade mark. These domain names are a combination of the ELITE element and descriptive terms (i.e., “model” and “models”). The Panel finds that the ELITE trade mark remains the distinctive element of the domain names, and the additional descriptive terms are insufficient to avoid a finding of confusing similarity.
The Respondent does not contest the above.
The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
Paragraph 4(c) lists (non-exhaustively) three circumstances that can demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Names:
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
In relation to paragraph 4(c)(i), the domain name is being passively held, and as such is not being used at all, whether in connection with any bona fide offering of goods or services or otherwise.
The Respondent’s use of the and domain names is commercial use, but is not bona fide use. The Complainant has registered trade mark rights in ELITE MODEL LOOK and ELITE MODEL MANAGEMENT and has established common law trade mark rights in ELITE. These rights existed before the Respondent first used these terms. The Panel concludes, based on a detailed review of all the evidence provided by the Complainant and the Respondent, that the Respondent registered and used the Disputed Domain Names because of the reputation of the Complainant, with knowledge of the Complainant’s trade mark right, and with the aim of exploiting the value of the Complainant’s trade marks.
This does not constitute bona fide use.
The Respondent submits that he had a licence from the founder of the Elite Business to use its trade marks, but did not provide the Panel with a copy of this licence or any other evidence in support of a licence arrangement. The Complainant’s supplementary filing refutes the Respondent’s licence claim. Even if the Respondent previously held such a licence (which the Panel finds unlikely), any arrangement between the parties that may have existed is clearly at an end. As such, the Respondent no longer has any rights or legitimate interests in the Disputed Domain Names.
Moreover, the Respondent’s registration and use of , in circumstances where the Respondent does not use the term ELITE MODEL LOOK in any way, and where the Elite Model Look competition is famous in the relevant trade, is strong evidence of lack of bona fides by the Respondent.
In relation to paragraph 4(c)(ii), the Respondent has not been “commonly known by” any of the Disputed Domain Names. The Respondent has a registered business name and has been using that registered business name for some time. However, looking at all the circumstances, such use (as discussed above) is not bona fide, and does not give the Respondent rights or legitimate interests under the Policy.
In light of the above, the Panel finds that that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names.
The Complainant succeeds on the second element of the Policy in respect of each of the Disputed Domain Names. D. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Names have been registered or subsequently used in bad faith.
The Respondent submits that at the time he registered the Disputed Domain Names, he had a licence from the founder of the Elite Business to use the trade marks of the Elite Business. As discussed above, the Complainant denies ever giving such a licence. In any event, the Panel does not need to address the circumstances surrounding the registration of the Disputed Domain Names. The Complainant need only to establish bad faith use under the Policy.
It is unclear whether any relationship ever existed between the parties. There is certainly no relationship between the parties at present. From at least 2004, the Respondent was aware that he had no relationship with the Complainant and no right to use the Complainant’s trade marks.
Under these circumstances, the Panel finds that the Respondent is using the and domain names in bad faith by intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the and websites (see e.g., US Bank National Association as trustees for the First Alert Trust v. Master Distributors Unit Trust, Bradley Green,WIPO Case No. DAU2011-0031; and paragraph 4(b)(iv) of the Policy).
In relation to the passively held domain name, the Panel observes that the Elite Model Look modeling competition is very famous. As someone purportedly involved in the modeling industry, the Respondent would have been aware of the competition when he registered the domain name. It appears that the Respondent is retaining the domain name to prevent the Complainant from reflecting its trade marks in corresponding domain names and to disrupt the Complainant’s business activities. This is bad faith use under paragraphs 4(b)(ii) and (iii) of the Policy.
In light of the above, the Panel finds that the third element of the Policy is made out in respect of each of the Disputed Domain Names. 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 Disputed Domain Names, , and , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: April 21, 2015
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