WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elite Licensing Company SA, Elite Model Management v. Vladimir Smirnov, n/a
Case No. D2011-1208
1. The Parties
The Complainants are Elite Licensing Company SA of Fribourg, Switzerland, and Elite Model Management of Paris, France, represented by Cabinet Degret, France.
The Respondent is Vladimir Smirnov, n/a of Tyumen, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <eliteteenvids.com> is registered with The Planet Internet Services Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2011. On July 15, 2011, the Center transmitted by email to The Planet Internet Services Inc. a request for registrar verification in connection with the disputed domain name. On July 15, 2011, The Planet Internet Services Inc. 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 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 July 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on August 17, 2011. 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 Complainants belong to the Elite Group of companies, which was founded in France in 1972 and operates a renown model agency, together with the company Elite Model Management Corp in the United States of America and in Canada.
In 1983, the Complainants launched the annual international model competition “Elite Model Look”, which is held in more than 50 countries and has about 350,000 annual participants. Many notable models, such as Claudia Schiffer, Cindy Crawford, Karen Mulder, Nastassja Kinski and Naomi Campbell, were discovered by this contest.
The Complainants are the owners of several trademark registrations including the verbal element “elite”, such as the French trademark ELITE MODEL MANAGEMENT, No. 1.662.492, registered on September 25, 1978, in classes 35, 41 and 42; the International registration for trademark ELITE MODEL MANAGEMENT No. 442.385, registered on December 6, 1978, in classes 35, 41 and 42, designating Benelux, Spain and Italy; the Community trademark ELITE MODEL LOOK No. 749.770, filed on February 11, 1998 and registered on February 19, 2004, in classes 3, 16 and 36; the Community trademark ELITE MODELS FASHION No. 345.926, filed on August 7, 1996 and registered on June 27, 2002, in classes 3, 14, 16, 18, 25, 28 and 40; the Japanese registration ELITE models No. 4.093.514, filed on February 23, 1996 and registered since December 19, 1997, in class 41; the International registration ELITE No. 949.195, registered on September 14, 2007, under the Paris Convention priority dating back to March 20, 2007, in 22 classes, with effect in about 70 countries.
The Complainants are the owners, among others, of the domain names <elitemodel.fr>, registered on September 27, 2005, <elitemodelworld.com>, registered on May 17, 2005, and <elitemodellondon.co.uk>, registered on January 6, 2009.
The disputed domain name was registered on April 3, 2007.
5. Parties’ Contentions
The Complainants contend that the disputed domain name <eliteteenvids.com> is confusingly similar to its trademarks since it reproduce the mark ELITE in its entirety, with the mere addition of terms "teen" and "vids" (as abbreviation of videos), which are generic or descriptive terms related to the field of activity in which the Complainants operate.
The Complainants underline that several courts and UDRP panels have recognized that the Complainants’ trademark ELITE enjoys notoriety in many countries of the world.
With reference to rights or legitimate interests, the Complainants contend that the Respondent does not have any trademark rights in the disputed domain name, that it has never been granted any rights to use ELITE trademark by the Complainants and that the Respondent is not currently commonly known by the disputed domain name. The Complainants also state that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, nor has he made preparations to do so, since the disputed domain name pointed to an active website which displayed adult content and further links to other pornographic websites.
The Complainants highlight that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name and has caused prejudice to the Complainants since it has diverted the Complainants’ clients seeking for information on the Elite Group’s goods or services or information as to the current edition of the modeling competition to websites displaying “despicable material”.
With reference to the circumstances evidencing bad faith, the Complainants state that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its website.
The Complainants underline that the disputed domain name is pointed to a website which displays photos of models which could be mistakenly attributed to the Complainants and that the use made by the Respondent endangers the Complainants’ public, which is for a larger part composed of minors, and is causing prejudice to the Complainants’ reputation.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “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 the Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of several trademark registrations for ELITE alone and together with other descriptive terms as listed in the factual section.
The Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainants. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark in a domain name is not a distinguishing feature.
Therefore, the mere addition of the words “teen” and “vids” does not exclude the likelihood of confusion between the disputed domain name and the Complainants’ trademarks.
As mentioned, it is well established in prior UDRP decisions that the addition of descriptive terms to a trademark in a domain name is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to the BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
In view of the above, the Panel finds that the Complainants have proven that the disputed domain name is confusingly similar to the trademarks in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainants. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainants’ prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants’ trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that he intends to make a legitimate, non commercial or fair use of the disputed domain name.
The Complainants have provided evidence that the disputed domain name has been used in connection with a website displaying adult content videos, as well as links to third party sites providing the same kind of contents. The Panel finds that the use of a domain name that is confusingly similar to a registered and well-known trademark in order to attract Internet users to a website offering contents that many are likely to find offensive does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainants have submitted evidence demonstrating that the Complainants and their Elite modeling agency have been well-known internationally as one of the leading modeling agencies. Moreover, the notoriety and reputation of the Complainants’ trademark ELITE and the particular distinctiveness of the word “elite” in the composite marks owned by the Complainants have been recognized in several UDPR disputes decided in favor of the Complainants.
In light of the above, the Panel finds that the Respondent was likely aware of the Complainants’ trademark at the time of registration of the disputed domain name.
As mentioned above, the Respondent has used the disputed domain name, that is confusingly similar to the Complainants’ trademark, in order to offer adult content and likely to derive pay-per-click revenues. The Panel finds that the Respondent has therefore intentionally attempted to attract Internet users to his website, for commercial gain, by creating a likelihood of confusion with the Complainants’ trademark, according to paragraph 4(b)(iv) of the Policy.
Many panels have also found that the intentional use of a confusingly similar domain name to draw Internet users to a site hosting pornographic content or links to pornographic content is evidence of bad faith. See, inter alia, Guccio Gucci S.p.A v. Roberto Baggio, WIPO Case No. D2009-1196 (guccitube.com), in which it was also found: “Most Internet users unwittingly lured into the Respondent's website would, upon seeing its content, realise that it had no connection with the Complainant. However, by that time, Internet users seeking the Complainant would already have been diverted to content that many are likely to find distasteful and offensive. Such conduct on the Respondent's part is inherently misleading and has the potential to tarnish the reputation of the Complainant's GUCCI trademark”. See also Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215; America Online v. Viper, WIPO Case No. D2000-1198; MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661; Coral Trademarks, Ltd. v. Eastern Net, Inc., WIPO Case No. D2000-1295; Miroglio S.p.A. v. Mr. Alexander Albert W. Gore, WIPO Case No. D2003-0557; V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301; and Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.
In view of the above, the Panel finds that the disputed domain name was registered and has been used in bad faith.
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 <eliteteenvids.com> be transferred to the first Complainant (Elite Licensing Company SA).
Dated: August 31, 2011