Complainants are Elite Licensing Company S.A., Fribourg, Switzerland and Elite Model Management, Paris, France (collectively “Complainant”).
Respondent is Lorena Saffarano, Barcelona, Spain.
The disputed domain name <agenciaelite.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. On October 2, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On October 2, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on October 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2008. The Response was filed with the Center on October 20, 2008. Although the registration agreement for the domain name at issue was in English, the Response was in the Spanish language. Thereafter, on November 13, 2008, Respondent filed an English translation of the Response with one added paragraph. The Panel accepted and considered the English translation of the Response.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 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.
On November 17, 2008, Complainant submitted to the Center several unsolicited additional submissions. The Panel did not review nor did it consider Complainant's additional unsolicited submissions in reaching its decision.
Complainant holds hundreds of registrations for device marks and word marks featuring the marks ELITE and ELITE MODELS. Complaint, Annex 14. In the present case, Complainant has elected to rely on registrations for ELITE and ELITE MODEL MANAGEMENT which date from September 25, 1978 and which include a registration effective in Spain dating from December 6, 1978. Complaint, Annex 15. Complainant also submits a decision by the Spanish Patent and Trademark Office, refusing to register the proposed mark ELITE PUBICATIONS by a third party in light of Complainant's marks ELITE and ELITE MODELS STUDIO among others and stating “considering the notoriety of the prior trademarks proven in the opposition procedure, there is a risk of confusion in the market place.” Complaint, Annex 16(b).
Complainant is the leading modeling agency worldwide, with 36 agencies across five continents. It has a 45% market share of the modeling agency market in the United States and Europe. Its models include such well-recognized names as Claudia Schiffer, Cindy Crawford, Nastassja Kinski, Iman, Naomi Campbell, and Brooke Shields, to name only a few. Complaint, Annex 5. The Elite Agency was established in 1972 in Paris, France, and has an agency in Spain, the country of residence of Respondent. Complainant conducts an “Elite Model Look” contest on an annual basis, and in Spain the contest takes the form of a television show entitled, “Super Modelos,” which is aired in prime time. In late August 2008, Complainant discovered that Respondent had registered the domain name at issue and was being used to resolve to an escort services web site, which Complainant finds to be objectionable and degrading.
In addition, Complainant has developed a number of products in the clothing and fashion area that utilize Complainant's ELITE mark such as swimsuits, shoes, handbags, sunglasses, watches, and perfume. Complaint, Annexes 7 through 13.
Complainant has not authorized Respondent to use its marks in any way and has never assigned, licensed, sold, or transferred any rights in the ELITE mark to Respondent.
Respondent registered the domain name at issue on February 2, 2005. Complaint, Annex 1. Respondent uses the domain name at issue to resolve to a web site at which Respondent offers escort services. The female escorts are listed under and referred to as “models.” The solicitation of young women interested in serving as escorts is listed as “casting.” Complaint, Annex 2.
Respondent argues that the word “elite” is a common English descriptive term, derived from the French word “élite.” Respondent cites the many usages of “elite” in company names and as part of domain names. Prior to the registration of the domain name at issue, Respondent had used the domain name <bcnelite.com> to resolve to her escort services web site, since the business was aimed at the Barcelona area. As the business expanded, Respondent searched for an “elite” related domain name, specifically <agenciaelite.com> and, finding that it was available, registered the domain name at issue.
Respondent's web site is highly successful in terms of “hits” and is recognized as a market leader in the luxury escorts sector. Respondent argues that its domain name is not confusingly similar to Complainant's marks. Respondent does not contend that she was unaware of Complainant's marks at the time that she registered the domain name at issue.
Complainant contends that the domain name at issue is confusingly similar to marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent contends that the domain name at issue is a common descriptive term and that it is not confusingly similar to Complainant's mark, that Respondent has rights and legitimate interests in respect of the domain name at issue, and that Respondent has not registered and is not using the domain name at issue in bad faith.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
Where a domain name incorporates a complainant's mark in its entirety, the domain name is confusingly similar to the complainant's mark, despite the addition of other words in the domain name and despite the fact that a common word may be appended or a common word inserted therein. This is the so-called “objective test” adopted by the majority of panelists. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Therefore, the Panel finds that the domain name at issue is confusingly similar to Complainant's marks.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue, nor has Complainant granted Respondent a license, permission, or authorization to use its registered ELITE or ELITE MODELS marks.
Respondent argues that the word “elite” is a common descriptive term and that Respondent is merely using the term in its descriptive sense to describe the nature of her luxury escort services. However, the selection of the companion word “agencia” is telling. The Spanish word for “agency” appended to what is also a trademark in the modeling industry immediately suggests Complainant's business. Modeling operations are commonly known in the grade as “modeling agencies,” just as advertising firms are commonly known as “advertising agencies,” whether they in fact are acting in an agency capacity or not. In light of the findings in Part C, below, the Panel finds that Respondent lacks rights and legitimate interests in respect of the domain name at issue.
Respondent uses the domain name at issue to resolve to a web site at which escort services are offered. However, as indicated in Part B above, the domain name itself suggests that it is identified with a modeling agency, namely that particular modeling agency operated by Complainant. The fact that the young women offered as escorts are described on the web site as “models” and the fact that the web site solicitation to young women to become escorts is listed under “casting” again suggest that the web site is associated with a modeling agency, namely that particular modeling agency operated by Complainant. Accordingly, the Panel finds that Respondent is using the domain name at issue to attract Internet users to her site in order to profit from the confusion with Complainant's marks. Thus, the Panel finds such conduct to fall within paragraph 4(b)(iv) of the Policy and to constitute bad faith registration and use.
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 name <agenciaelite.com> be transferred to Complainant, Elite Licensing Company, S.A., as specifically requested by Complainant.
M. Scott Donahey
Dated: November 19, 2008