WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elite Licensing Company S.A., Elite Model Management v. Domains by Proxy Inc./A Sweet Sickness 666, Elite Models International
Case No. D2008-0275
1. The Parties
The Complainants are Elite Licensing Company S.A., Fribourg, Switzerland and Elite Model Management, Paris, France, represented by Cabinet Degret, Paris, France.
The Respondent is Domains by Proxy Inc./A Sweet Sickness 666, Elite Models International, Virginia, United States of America.
2. The Domain Names and Registrar
The disputed domain names <elitemodelsinternational.com>, <elitemodelsinternational.net> and <elitemodelsinternational.org> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2008 concerning <elitemodelsinternational.com>. On February 25, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the first domain name at issue. On February 26, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response identifying A Sweet Sickness 666 as the registrant and providing the contact details.
In response to a notification from the Center the Complainants filed an amendment to the Complaint on February 29, 2008 and requested the inclusion of the domain names <elitemodelsinternational.net> and <elitemodelsinternational.org>. On March 5, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the second and third domain names at issue. On March 5, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response identifying Elite Models International as the registrant and providing the contact details which were the same as for A Sweet Sickness 666.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2008.
The Center appointed Ross Wilson as the sole panelist in this matter on April 7, 2008. 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
Elite Licensing Company S.A. is a company incorporated in Switzerland and Elite Model Management is a company incorporated in France. Between them they own numerous ELITE trademarks in about 40 countries. Their earliest ELITE trademark was registered in France on September 25, 1978.
The Complainants are widely known all over the world for their model and model agency services. Some of their well known agency models include Claudia Schiffer, Cindy Crawford, Karen Mulder, Nastassja Kinski and Naomi Campbell. The Complainants organise the annual worldwide Elite Model Look contest which averages 350,000 participants.
In addition to the model agency brand the ELITE trademark is used to market goods, such as, beachwear, shoes, bags, sunglasses, watches, perfumes and cosmetics.
The Respondent registered the disputed domain names on October 29, 2007.
5. Parties’ Contentions
The Complainants contends that the main and most distinctive element of the Complainants’ trademarks, in which it has rights, is the word ELITE as it is always the first word to be seen and to be pronounced. The other elements are seen as only of secondary nature. The incorporation of the ELITE trademark, in their entirety or for their most part, in the disputed domain names further establishes that the domain names are identical or confusingly similar to the Complainants’ trademarks. The Complainants rely on the past WIPO UDRP decisions of Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Qsoft Consulting Limited v. Bernard Lynch D/B/A/ Rainbow Globe, WIPO Case No. D2004-0668 to support their views. For the Complainants the addition of the terms ‘models’ and ‘international’ do not avoid the confusion but, on the contrary, enhance it and lead the public to believe that the disputed domain names are linked to, affiliated with, or at least endorsed by the Complainants.
According to the Complainants, the Respondent is taking an illegitimate advantage of the Complainants’ fame to promote potentially illegal activities and in so doing is harming the Complainants’ reputation and goodwill by creating an association in the public’s mind between the Respondent and the Complainants. According to the Complainants, it is obviously tempting for people who provide “companionship services” to benefit from the Complainants’ image and take a free ride on their fame.
The Complainants maintain that they have not granted the Respondent permission or consent to use or register their marks or similar marks as a domain name. The Respondent’s use of the disputed domain names diverts Internet users and potentially endangers young girls seeking information about or even employment with the Complainants. This causes a real prejudice to the Complainants, as the Internet users trying to reach the Complainants, or trying to find some of the Complainants’ many products or services, may be led to believe that there is a link between the Complainants and the Respondent and its website, where no such link exists.
The Complainants consider the Respondent cannot have ignored that it was registering domain names infringing on the rights of the Complainants and therefore the Respondent has no legitimate interest in the domain names. That the Respondent was aware of the Complainants and their rights when registering the disputed domain names also results from the fact that the Respondent clearly tries to insinuate itself in the wake of the Complainants, notably by using vocabulary clearly referring to the Complainants. Therefore, the Respondent aims to try to benefit unfairly from the reputation of the Complainants and their trademarks.
In the Complainants’ view, the unauthorised registrations of domain names that are identical to a famous trademark is in itself evidence of bad faith, citing PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.
The Complainants assert that their trademarks are globally well renowned and even if the Respondent failed to conduct appropriate searches, it appears highly unlikely that it would have been unaware of the Complainants’ pre-existing rights when registering the disputed domain names.
The Complainants believe that by using the disputed domain names the Respondent intentionally created for commercial gain a likelihood of confusion with their trademarks as to the source, sponsorship, affiliation or endorsement of the domain names and websites in Internet users’ minds.
Also, the Complainants consider that the Respondent’s use of the disputed domain names amount to an unfair exploitation of their trademarks as the Respondent receives payment for every click on a link displayed on the websites.
Finally, the Complainants assert that the use of a proxy registration service to avoid the disclosure of the name and address of the real party in interest is consistent with the other evidence of bad faith in registering and using the disputed domain names. Therefore, it can be considered that the Respondent’s bad faith in the present case is also shown by the concealment of its identity.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants have submitted extensive evidence to demonstrate that have rights in about 300 trademarks registered in nearly 40 countries. The majority of the marks are device marks consisting of the stylized word “Elite” and sometimes in combination with the words “Elite Model Management”, “Elite Models Studio”, “Elite Models Fashion” or “Elite Models Look”. In addition, there are numerous word marks registered including “Elite Models Fashion” and “Elite Models Studio”. In the United States of America both device marks and word marks are registered.
The two words “elite models” are the consistent elements of the Complainants’ trademarks and are reflected in the disputed domain names which include a third element “international”. The third element of the disputed domain names is simply descriptive and, consistent with previous decisions, does not provide sufficient differentiation from the Complainants’ marks. The gTLDs are ignored for the purpose of the comparison. The result is a domain name with three different gTLDs which is confusingly similar to the Complainants’ trademarks.
In an earlier case involving the Complainants (Elite Licensing Company S.A. and Elite Model Management v. Balalaika Ltd., WIPO Case No. D2007-0006), the disputed domain name was <elitemodelworld.com> which primarily differs from the present case by the third element being “world” rather than “international”. In that case the panel noted that the main or dominant element of the Complainants’ trademarks is “a combination of ELITE and MODEL, and a ‘family’ of registrations appears to exist where “elite” and “model” are combined with a third word”. That panel’s conclusion, after taking into account the Complainants’ trademark portfolio as a whole and elements of the use, recognition and world-wide fame, was that the disputed domain name was confusingly similar to the registered and other common law trademarks owned by the Complainants.
In view of the above, this Panel accepts that the disputed domain names are confusingly similar to the Complainants’ registered trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the words ‘Elite models international’. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The search evidence provided by the Complainants indicates that the Respondent does not have any trademarks rights related to the words Elite Models International in so far as the United States, OHIM and International (WIPO) registries. Similarly, a corporation registration search in the Respondent’s state revealed no registration. This evidence suggests there is little likelihood that the Respondent is commonly known by the domain names.
The evidence before the Panel is that the Respondent has used the domain names to derive a commercial benefit through ‘pay per click’ advertisement schemes and pop-up commercials which under the circumstances are not a bona fide offering of goods and services.
The Respondent has chosen not to rebut the evidence provided and consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Complainants assert that the bad faith domain names registration and use is evidenced by the Respondent knowingly incorporating the Complainants’ well-known trademarks in the disputed domain names. As stated in Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the panel found that in the absence of contrary evidence, the respondents knew of or should have known of the complainant’s trademark and services at the time the respondents registered the domain names given the widespread use and fame of the complainant’s mark. Also, in the decision in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, the panel found that bad faith exists where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”
This Panel has formed a similar view that it is unlikely that the Respondent would have randomly registered the disputed domain name comprising descriptive/generic terms which so well describe the Complainants’ business.
Evidence that the domain names have been registered and used in bad faith is apparent in the fact that there is no reason for the Respondent to use the Complainants’ widely known trademark other than to attract a financial benefit. The fact that the Respondent is receiving payment for every click on a link displayed in its websites demonstrates an intention to attract Internet users for commercial gain.
On the basis of the evidence put forward by the Complainants, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainants have demonstrated that the domain names were registered and used in bad faith.
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 names <elitemodelsinternational.com>, <elitemodelsinternational.net> and <elitemodelsinternational.org> be transferred to the Complainants.
Dated: April 21, 2008